Leon STAMBLER, Plaintiff, v. AMAZON.COM, INC., et al., Defendants Civil Action No. 2:09–CV–310 (DF) United States District Court, E.D. Texas, Marshall Division May 23, 2011 Counsel Brent Nelson Bumgardner, Christie Brow Lindsey, Edward R. Nelson, III, Ryan P. Griffin, Steven Brannon Latimer, Thomas Christopher Cecil, Nelson Bumgardner Casto PC, Decker A. Cammack, Friedman Suder & Cooke, Fort Worth, TX, Debra R. Coleman, Eric Miller Albritton, Stephen Edwards, Albritton Law Firm, Thomas John Ward, Jr., Ward & Smith Law Firm, Longview, TX, Ronald Allen Dubner, Ronald A. Dubner-Attorney at Law, Plano, TX, for Plaintiff. Kent E. Baldauf, Jr., Anthony W. Brooks, Bryan P. Clark, James J. Bosco, Jr., The Webb Law Firm, Pittsburgh, PA, Christopher J. Cuneo, John N. Zarian, Parsons Behle & Latimer, Boise, ID, Debra Elaine Gunter, Yarbrough Wilcox, PLLC, Herbert A. Yarbrough, III, Attorney at Law, Tyler, TX, for Defendant. Folsom, David, United States District Judge ORDER *1 Before the Court is Plaintiff's Motion to Compel Discovery from Defendants J.C. Penney, Sears, and Staples. Dkt. No. 470. Also before the Court is the response of Defendants J.C. Penney Company, Inc., J.C. Penney Corporation, Inc. (collectively, “JCPenney”), Staples, Inc. (“Staples”), Sears Holdings Corporation, Sears Brands, L.L.C., and Sears Holdings Management Corporation (collectively, “Sears”) (all collectively referred to herein as “Defendants”). Dkt. No. 481. Further before the Court is Plaintiff's reply. Dkt. No. 483. The Court held a hearing on May 11, 2011. See 5/11/2011 Minute Entry, Dkt. No. 484. Having considered the briefing and all relevant papers and pleadings, the Court finds that Plaintiff's motion should be GRANTED IN PART and DENIED IN PART. I. DISCUSSION This is a patent infringement case in which Plaintiff asserts United States Patents No. 5,793,302 and 5,974,148, both entitled “Method for Securing Information Relevant to a Transaction.” Plaintiff moves to compel JCPenney, Sears, and Staples to respond more fully to certain interrogatories, to produce more documents and e-mail, to produce witnesses for deposition more quickly, and to pay attorney's fees and costs for the failure of a JCPenney witness to appear for a noticed deposition. Dkt. No. 470. A. Depositions (1) Rule 30(b)(6) Deposition Plaintiff submits that he previously deposed Defendants under Rule 30(b)(6) but has served a new Rule 30(b)(6) deposition notice on March 18, 2011. Dkt. No. 470 at 6. Defendants purportedly committed to provide available dates for deposition no later than March 28, 2011, but failed to do so. Id. Plaintiff also submits that “Defendants have taken the position that [Plaintiff] is entitled to take only one 30(b)(6) deposition per Defendant group, regardless of whether [Plaintiff] segregates the topics into separate 30(b)(6) notices.” Id. at 8. Plaintiff responds that although a party is normally limited to one deposition of a “person” without leave of court, “Rule 30(b)(6) depositions are different from depositions of individuals.” Id. (quoting Quality Aero Tech., Inc. v. Telemetrie Elektronik, GmbH, 212 F.R.D. 313, 319 (E.D.N.C.2002)). Plaintiff moves to compel Defendants to produce Rule 30(b)(6) witnesses. Id. at 6. Defendants respond that Plaintiff previously took Rule 30(b)(6) depositions of Defendants (and used only about 2 hours, 1.5 hours, and 5.5 hours as to each of Sears, JCPenney, and Staples, respectively). Dkt. No. 481 at 2 & nn. 1–2. Defendants cite Rule 30(a)(2)(A)(ii) for the proposition that a witness cannot be deposed more than once without leave of court (unless the parties agree to the deposition). Id. at 2. Defendants submit they “cannot agree to an unlimited series of wide-ranging corporate depositions in addition to numerous individual depositions.” Id. Defendants cite numerous out-of-circuit cases in support of their position that Rule 30(a)(2)(A)(ii) applies to corporations, not just individuals. Id. at 2–4 & n. 3 (citing, e.g., Ameristar Jet Charter, Inc. v. Signal Composites, Inc., 244 F.3d 189, 192 (1st Cir.2001), and State Farm Mutual Auto. Ins. Co. v. New Horizont, Inc., 254 F.R.D. 227, 234–35 (E.D.Pa.2008)). Defendants also cite, however, an Order of Judge Ward of this Court's district, which denied a motion to quash a second Rule 30(b) (6) notice because “[t]here is no Rule or law from this Circuit requiring a party to seek leave of court in order to take a second 30(b)(6) deposition of a corporate entity, when the topics in the second deposition notice are different from the first.” Frank's Casing Crew and Rental Tools, Inc., et al. v. Tesco Corp., et al.,C.A. No. 2:07–cv–15 (E.D.Tex. Jan. 21, 2009). *2 Alternatively, Defendants argue that Plaintiff's second set of Rule 30(b)(6) notices are “invalid” because “the topics are so vague and broad, and in many instances of questionable, if any, relevance, that they impose an undue burden on Defendants in trying to identify and prepare representatives for testimony.” Id. at 4. Defendants argue, for example, that Topics 1 through 5 “would require a witness to be prepared to testify as to the location of every document produced by Defendants and to explain how all the numerous documents were gathered and produced, as well as identify the organizational structure of any group or division that maintained a copy-electronic or otherwise-of each such document.” Id. at 5. Defendants submit that the remaining topics either relate to non-accused websites (which was a subject of Plaintiff's Motion to Compel Complete Discovery from Defendants Neiman Marcus, Sears and Staples (Dkt. No. 454)) or “would be more effectively addressed by ongoing document production or other written discovery.” Id. “Defendants are, however, willing to provide witnesses who will cover the subject matter of the remaining topics....” Id. In reply, Plaintiff submits that his Rule 30(b)(6) topics are not vague or overly broad, and Plaintiff cites Rule 26(b)(1), which permits discovery on any relevant, non-privileged matter, including the existence and location of documents. Dkt. No. 483 at 3. At the hearing, each Defendant agreed to submit to a second Rule 30(b)(6) deposition, and the parties agreed to confer regarding the noticed topics. Plaintiff's motion to compel is therefore DENIED WITHOUT PREJUDICE as to Rule 30(b)(6) depositions. (2) Non–Appearance of JCPenney Witness Mark Warhol In early February 2011, Plaintiff requested the deposition of Mark Warhol, a JCPenney employee. Dkt. No. 470 at 9. See also Dkt. No. 483 at 2 n. 1. Regardless, Plaintiff received no proposed date and, on March 3, 2011, Plaintiff noticed the deposition for March 21, 2011. Dkt. No. 470 at 9. JCPenney responded that March 21, 2011, was not acceptable due to scheduling conflicts. Id. Plaintiff replied that he would not agree to a different date unless JCPenney offered a date prior to April 22, 2011. Id. JCPenney did not file any motion to quash or motion for protective order. Id. Plaintiff's counsel appeared for the deposition on March 21, 2011, but Mark Warhol did not appear. Id. Plaintiff requests reimbursement for costs and attorney's fees associated with the non-appearance. Id. Defendants respond the Court should reject Plaintiff's “audacious” request for reimbursement because “Plaintiff unilaterally noticed the deposition” and then appeared “despite having been told several times that J.C. Penney could not make Mr. Warhol available then, but would present him on a mutually agreeable date.” Id. at 7. Defendants also note that Plaintiff ultimately deposed Mr. Warhol on April 5, 2011, two days before Plaintiff filed the present motion to compel. Id. *3 Plaintiff replies that JCPenney refused Plaintiff's offers to reschedule and “simply ignored [Plaintiff's] notice instead of filing a motion to quash it.” Dkt. No. 483 at 2 n. 1. At the hearing, Plaintiff agreed to withdraw his request for costs and attorney's fees for the non-appearance. This portion of Plaintiff's motion is therefore DENIED AS MOOT. (3) Promptness of Producing Witnesses for Deposition Plaintiff submits that “[t]he time between when [Plaintiff] requests a deposition date and the time the deposition finally occurs is between 2 and 5 months.” Dkt. No. 470 at 7. Plaintiff moves for “an order that requires Defendants to provide available deposition dates to [Plaintiff] within 10 days of [Plaintiff's] request and that the available dates provided be within 5 weeks of the date [Plaintiff] made the request.” Id. Defendants respond they have been diligent and “Plaintiff has already deposed 14 individual employees of Defendants,” in addition to Rule 30(b)(6) depositions. Dkt. No. 481 at 6. Defendants urge the Court to reject Plaintiff's request that the Court “micromanage” deposition scheduling. Id. at 5. Competent, diligent counsel and parties should both request depositions in a timely manner and make witnesses available with reasonable promptness. During oral argument, the parties represented that they have resolved all but one of the outstanding deposition notices. Plaintiff's request for a blanket order on deposition scheduling should be DENIED. As stated by the Court at the hearing on this motion, if the parties cannot reach agreement, the Court will hold a scheduling conference by telephone to set dates for any outstanding deposition notices. B. Interrogatories Plaintiff moves to compel Defendants “to fully answer Plaintiff's Interrogatory Nos. 10, 11, 12, and 13 with all relevant, discoverable information.” Dkt. No. 470 at 1. Defendants respond that Plaintiff has “regurgitated interrogatories he had served in past cases involving online banking and online bill pay defendants,” which “do not make sense when applied to retail websites.” Dkt. No. 481 at 8. Plaintiff replies that despite Defendant's claims that they do not conduct funds transfers, “they cannot dispute that customers make payments for goods and merchandise using, on, or throughjcpenney.com,sears.com, andstaples.com.” Dkt. No. 483 at 4 (emphasis omitted). The interrogatories at issue request that Defendants: identify services provided to Defendants by third parties; describe Defendants' funds transfer processes; list the fees charged by or to Defendants; and identify Defendants' user interfaces and the dates of use thereof. The Court addresses these interrogatories in turn: INTERROGATORY NO. 10: For each website, product, or service identified in response to Interrogatory No. 1, identify each third party that provides products or services for processing, in whole or in part, payments and/or funds transfers made using, on, or through Defendant's website(s) (or other product or service); and describe in detail the product or service provided to or used by Defendant, the dates of use, and the type(s) of payment or funds transfer information given to the third party. *4 Dkt. No. 470, Ex. 1 at 8. Plaintiff argues that “Defendants each identify the third parties that provide products and services, but they do not provide the remainder of the requested information.” Dkt. No. 470 at 10. Defendants respond that they answered the “primary question” and are not obligated to answer the remainder of the interrogatory because it is “indisputable a subpart” and “Plaintiff has already exceeded his permitted number of interrogatories.” Id. at 8. In other words, Defendants conclude that “[b]ecause Defendants have provided information [as] to more than one subpart already, their responses to Interrogatory 10 are complete.” Id. at 9. Defendants cite various cases for the proposition that where an interrogatory contains “discrete subparts,” those subparts must be counted toward the total number of permitted interrogatories. Id. Plaintiff replies that in correspondence, Defendants' counsel already agreed to answer all of the interrogatories at issue. Dkt. No. 483 at 4. Alternatively, Plaintiff argues that the purported “subparts” are “logically and factually subsumed within and necessarily related to the primary question posed in the interrogatory.” Id. (citation and quotation marks omitted). Defendants properly note that discrete subparts may be counted toward the total number of interrogatories. See, e.g., Fisher v. Agios Nicolaos V, 636 F.2d 1107, 1115 (5th Cir.1981) (“Plaintiff has filed an original set of interrogatories with 59 principal questions and over 140 subquestions, a total of 1[9] 9 interrogatories, which Defendant has answered. Plaintiff filed an additional second set of interrogatories, consisting of 24 questions with 6 subparts, a total of 30 interrogatories....”). But if a serving party purportedly abuses interrogatories, the proper course is for the responding party to file a motion to strike or a motion for protective order. More importantly, Defendants cite no authority for the proposition that the responding party can craft its own remedy by deciding which interrogatories (or subparts) to answer and which to ignore. See, e.g., Maness v. Meyers, 419 U.S. 449, 458, 95 S.Ct. 584, 42 L.Ed.2d 574 (1975) (regarding failure to produce documents, warning against “private determinations of the law”) (citations omitted). Plaintiff's motion should therefore be GRANTED as to Interrogatory No. 10. Further, Defendants' position regarding their refusal to answer certain subparts does not appear to have been “substantially justified.” Fed.R.Civ.P. 37(a)(5)(A)(ii). The Court therefore ORDERS Defendants to show cause why they should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion [as to Interrogatory No. 10], including attorney's fees.” Fed.R.Civ.P. 37(a)(5)(A). INTERROGATORY NO. 11: For each recipient of a payment or funds transfer made through a website, product, or service identified in response to Interrogatory No. 1, describe the process of transferring payment or funds to the recipient, including in your response the information used to determine the account from which payments or funds transfers are made, and the account to which payments or funds are transferred, where and how such information is stored and accessed, and the method in which payments or funds are transferred (e.g. ACH, transfer to another account with Defendant, wire, etc.). *5 Dkt. No. 470, Ex. 1 at 8. Plaintiff argues that despite Plaintiff's e-mail responses to Defendants' requests for clarification of this interrogatory, “each Defendant has provided identical objections to this Interrogatory but no substantive response.” Dkt. No. 470 at 11 (emphasis omitted). Defendants respond that this interrogatory is too “cryptic” to answer but, “in the spirit of cooperation and acting in good faith, Defendants have now amended their responses to provide information regarding the account(s) to which third parties deposit settlement funds.” Dkt. No. 481 at 10 (citing Exs. E–3 (JCPenney), E–4 (Staples), & E–5 (Sears)). Plaintiff replies that “despite Defendant's claims to the contrary, their amended interrogatory responses do not cure the deficiencies of their prior responses” and “provide little more than cursory additional information.” Dkt. No. 483 at 4. Defendant's original responses to Interrogatory No. 11 gave no substantive response. See Dkt. No. 470 at Exs. 22 (JCPenney), 23 (Sears), & 24 (Staples). Plaintiff's counsel's March 29, 2011 e-mail clarifies what Plaintiff is seeking by Interrogatory No. 11. Defendants' amended responses are reasonably responsive to the interrogatory as clarified by the e-mail. See Dkt. No. 481 at Exs. E–3 (JCPenney), E–4 (Staples), & E–5 (Sears). Plaintiff's request for further amended responses to this interrogatory is therefore DENIED. Clarification of this interrogatory was necessary for Defendants to be reasonably expected to respond, so Defendants' objections were “substantially justified,” so the Court declines to award any expenses to Plaintiff. Fed.R.Civ.P. 37(a)(5)(A)(ii). Also, although Defendants served their amended responses after Plaintiff filed his motion to compel, that motion was filed only about one week after Plaintiff's clarification of the interrogatory. See 3/29/2011 e-mail, Dkt. No. 470 at Ex. 25; Dkt. No. 470 (motion filed April 7, 2011); 5/2/2011 Dkt. No. 481 at Exs. E–3, E–4, & E–5 (amended responses served May 2, 2011). These “other circumstances” would “make an award of expenses unjust.” Fed.R.Civ.P. 37(a)(5)(A)(iii). Finally, although Plaintiff's request for further amended responses is denied, the Court declines to award any expenses to Defendants because Plaintiff's “motion was substantially justified” and was filed prior to Defendants serving their amended responses. Fed.R.Civ.P. 37(a)(5)(B). INTERROGATORY NO. 12: From 2003 to the present, identify all fees or charges, paid by, to, or on behalf of Defendant, for use of, enrollment in, or processing or receipt of payments or funds transfers on, through, or using any website, product, or service identified in response to Interrogatory No. 1, and state by quarter the gross revenue and/or cost for each type of fee or charge. Examples of fees or charges covered by this interrogatory include: (1) monthly fees or charges to users of Defendant's online payment or funds transfer services, (2) per transaction fees or charges to users of Defendant's online payment or funds transfer services, (3) fees or charges to recipients of payments or funds transfers made on, through, or using Defendant's online payment or funds transfer services, (4) monthly fees or charges paid to Defendant for payments or funds transfers made using, on, or through Defendant's website(s) (or other product or service), and (5) per transaction fees or charges paid to Defendant for payments or funds transfers made using, on, or through Defendant's website(s) (or other product or service). *6 Dkt. No. 470, Ex. 1 at 8. Plaintiff submits that Defendants respond they do not charge their “customers any fees for using or making purchases via the accused instrumentalities,” but Plaintiff argues that the interrogatory is broader. Dkt. No. 470 at 11. Plaintiff argues that Defendants fail to respond as to “other scenarios,” such as: “(1) fees charged by payment processors to Defendants for payment processing (such as per transaction fees for authorizing and/or settling internet sales); (2) fees charged by Defendants to third parties for sales of the third parties' goods on Defendants' websites; and (3) any other fees charged by Defendants to customers, suppliers or merchants relating to online sales.” Id. Defendants respond that during meet and confer, “Plaintiff's counsel indicated he seeks any interchange fees paid to credit card issuers or processors-but that information is neither asked for nor relevant.” Dkt. No. 481 at 10. Plaintiff's reading of his own interrogatory is a tortured one. Nonetheless, given that Plaintiff has clarified what he now seeks through this interrogatory, Defendants should respond appropriately in light of that clarification. Plaintiff's motion should therefore be GRANTED as to Interrogatory No. 12. Because of Plaintiff's contortion of his own interrogatory, the Court finds Defendants' objections and opposition were “substantially justified,” so the Court declines to award any expenses. Fed.R.Civ.P. 37(a)(5)(A) (ii). INTERROGATORY NO. 13: For each website, product, or service identified in response to Interrogatory No. 1, identify by bates number documents that illustrate each unique user interface since October 1, 2003, whereby a customer inputs information required to initiate a funds transfer or online payment (including without limitation, log-on screens, screens for inputting account information, screens for selecting a product or service, screens for inputting a transfer amount, etc.) and set forth the dates that each user interface is/was in use. Dkt. No. 470, Ex. 1 at 8. Plaintiff submits that Sears cites “illegible documents and does not include the dates of use for the user interfaces it purports to produce,” “JCPenney fails to identify the dates of use for its user interfaces,” and “Staples provides only objections to this Interrogatory and does not cite to any documents whatsoever.” Dkt. No. 470 at 12. Defendants respond that “[t]o the extent any documents reflecting user interfaces have been located, they have been produced and the Bates number listed.” Dkt. No. 481 at 10. Defendants submit they “are not knowingly withholding any responsive documents; they simply have no reason to print or retain such screen shots in the ordinary course of business.” Id. Plaintiff's motion should be GRANTED IN PART and DENIED IN PART as to Interrogatory No. 13: Accepting Defendants' representations that all responsive documents have been produced and identified, Plaintiff's motion should be DENIED as to document identification. In addition, during oral argument, Defendants stated they have the relevant user interface source code and either have produced it already or will produce it by the end of May 2011. Defendants provide no explanation, however, for failure to identify dates of use. Even if such information is apparent from the source code itself (see Dkt. No. 481 at 10 n. 14), Defendants are obligated to respond to the interrogatory either with the dates or with precise citations to where that information can be found in Defendants' production. See Fed.R.Civ.P. 33(d). Plaintiff's motion should therefore be GRANTED as to dates of use. *7 The Court ORDERS Defendants to show cause why they should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion, including attorney's fees,” as to dates of use. Fed.R.Civ.P. 37(a)(5)(A). The Court also ORDERS Plaintiff to show cause why he should not pay the Defendants' reasonable expenses, including attorney's fees, “incurred in opposing the motion” as to identification of user interface documents. Fed.R.Civ.P. 37(a) (5)(B). C. Documents Plaintiff submits that “JCPenney and Staples have not produced at least the following documents”: • documents that describe how credit card payments initiated using the secure checkout features on Defendants' websites are processed and completed (see Exh. 2, RFP Nos. 79, 81, 82); • agreements between Defendants and any acquirer or payment processor involved in processing credit card payments initiated on Defendants' websites (see Exh. 2, RFP Nos. 14, 17, 46, 83); • organizational charts, including those for the IT, marketing, and payment processing departments (see Exh. 3, RFP Nos. 1–8); and • communications between Defendants and third parties regarding payment processors used by Defendants and how payment processing works (see Exh. 2, RFP No. 9) Dkt. No. 470 at 12. Plaintiff also submits that “Staples has not provided access to its source code.” Id. at 13. Plaintiff submits that he served requests for most of these documents in April 2010 (the organizational charts were requested in August 2010) and that he re-urged his request for source code from Staples at least as early as January 2011. Id. JCPenney and Staples respond that Plaintiff's document requests assume that they have a “funds transfer network,” but JCPenney and Staples do not maintain any such network and “funds are not transferred through their websites.” Dkt. No. 481 at 11; see also id. at 13. JCPenney and Staples also submit they are in the process of producing documents regarding processing of credit card payments, as well as agreements with credit card payment processors. Id. at 11–12. As to organizational charts, Defendants respond that they have “produced organizational charts with respect to relevant departments.” Id. at 12. JCPenney submits that “[i]f Plaintiff continues to use J.C. Penney's organizational charts for the sole purpose of harassing J.C. Penney employees by noticing them for fruitless depositions, J.C. Penney will continue to assert its relevance objections to producing any remaining organization charts.” Id. Staples responds that “thestaples.com team and related groups do not routinely create organizational charts as a matter of course,” and “the organizational charts of the marketing departments Plaintiff seeks are completely irrelevant to the parties' claims and defenses.” Id. Defendants collectively submit that although marketing materials mention their websites, “[t]his fact alone does not warrant revealing every marketing employee, especially since Plaintiff uses the organizational charts for the sole purpose of noticing depositions and thereby causing Defendants to incur more cost for futile discovery tactics.” Id. *8 Plaintiff replies that “Defendants' strategy—making a drawn-out ‘rolling production’ of documents for tactical advantage—is disfavored in this district.” Dkt. No. 483 at 5 (citing Ex. 38, Whetstone Elecs., LLC v. Xerox Corp., No. 6:10–cv–278, Dkt. No. 156 (E.D.Tex. Apr. 7, 2011) (Love, J.)). Plaintiff's motion should be GRANTED as to credit card payment processing and processor agreements and similar responsive documents and communications, which Defendants represent they are in the process of producing. Dkt. No. 481 at 11–12. Given that production of these documents requires permission from third parties, the Court finds Defendants' delay has been “substantially justified.” Fed.R.Civ.P. 37(a)(5)(A)(ii). As to organizational charts, Defendants have unilaterally imposed non-production as a “self-help” sanction for Plaintiff's purported abuse of depositions. If Defendants believe that Plaintiffs are noticing depositions for harassment purposes, Defendants' proper remedy is to file a motion to quash or a motion for protective order as to each particular witness or group of witnesses. Cf. Maness, 419 U.S. at 458 (regarding failure to produce documents, warning against “private determinations of the law”). Also, marketing-related organizational charts are not “completely irrelevant,” as Defendants contend. Dkt. No. 481 at 12. For example, marketing may be relevant to damages. Also, upon review, Plaintiff's requests for organizational documents through Requests No. 1–8 of Plaintiff's Second Set of Requests for Production are reasonable in scope. Dkt. No. 481 at 12; see Dkt. No. 470, Ex. 3 at 5–6. Plaintiff's motion to compel should therefore be GRANTED as to organizational charts. The Court also ORDERS Defendants to show cause why they should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion [as to organizational charts], including attorney's fees.” Fed.R.Civ.P. 37(a)(5)(A). As to source code, Plaintiff requested source code in his First Set of Requests for Production, dated April 5, 2010: 73. Source code for all online payment and funds transfer systems offered or used by Defendant for the years 2003 through the present. 74. Source code for each Accused Instrumentality or system for providing each Accused Instrumentality for the years 2003 through the present. ... 80. Source code for any software used to interface Defendant's online payment or funds transfer systems with any funds transfer network used to transfer funds in response to Defendant's customers' request for an online payment or funds transfer. Dkt. No. 470, Ex. 2 at 12–13. Staples responded during oral argument that it offered to make its source code available to Plaintiff long ago, but Staples has not identified any evidence of when it purportedly did so, and the Court finds no citation to such evidence in Staples' briefing. See Dkt. No. 481. Regardless, by the end of January 2011, Plaintiff had re-urged his request for source code (see Dkt. No. 470 at Ex. 26), and only after the filing of Plaintiff's motion to compel has Staples agreed to produce its source code by the end of May 2011. Plaintiff's motion to compel source code from Staples should therefore be GRANTED, and the Court further ORDERS Staples to show cause why it should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion, including attorney's fees,” as to source code. Fed.R.Civ.P. 37(a)(5)(A). D. E–Mail *9 Plaintiff submits that in January 2011, the parties agreed on search terms and custodians for e-mail production, and at this point: JCPenney and Staples claim to have started searching the identified custodians' emails but have not yet produced those emails, nor will they provide [Plaintiff] with a date certain by which they will produce those emails. Sears produced a subset of, but not all, emails on March 29, 2011. Dkt. No. 470 at 14. Defendants respond that the agreed-upon search strings have produced overly burdensome results. Dkt. No. 481 at 13–14. For example, Defendants argue, searching for e-mails containing the word “revenue” is unreasonable because “Defendants have provided the actual revenue numbers for the accused sites; any email including those words will not provide any substantive information Plaintiff does not already have.” Id. at 13. Defendants submit that running the agreed-upon search strings yielded 440,000 e-mails for Sears, 180,000 for JCPenney, and about 200,000 for Staples. Id. at 14. Defendants submit that if reviewed at 30–50 documents per hour at a rate of $55 per hour for contract attorneys, “review costs alone could be in excess of $1 million.” Id. Defendants argue that the extent of this discovery should be limited by the balancing test of Rule 26(b)(2)(C)(iii). Id. at 14–15. “Sears has proposed modified search terms which result in 133,000 emails,” JCPenney intends to produce a subset of 15,000 documents, and Staples intends to produce a number similar to JCPenney's. Id . at 15. Plaintiff replies that having agreed to the search terms in January 2011, Defendants should not now be heard—four months later and only about two months before the close of discovery—to complain that the search terms are too burdensome. Dkt. No. 483 at 5. As to the purported burden, Plaintiff argues that “ ‘quick peek agreements' or ‘claw back agreements' as contemplated by the Federal Rules may completely eliminate attorney review costs.” Id. at 6. During oral argument, Plaintiff submitted it has reached agreement with Sears as to what e-mail will be produced. JCPenney and Staples submitted that Plaintiff's requested e-mail review and production will cost each of them about $250,000. JCPenney and Staples argued that under Rule 26(b)(2)(C)(iii), the expected benefits of production and the amount in controversy do not justify spending half a million dollars on their e-mail production. JCPenney, for its part, represents it will produce a subset of e-mails at a cost of about $40,000 (not including ongoing costs for storage by the discovery vendor). Rule 26(b) (2)(C)(iii) directs the Court to balance whether “the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues.” The parties have not apprised the Court of the amount in controversy as to these Defendants, and the Court has minimal information about the potential value of the e-mail. Defendants also do not advise how they have arrived at their proposed subset of e-mails, so the Court is not in a good position to judge once and for all whether Defendants' proposals are appropriate. *10 The burden of justifying non-production or reduced production should properly fall on JCPenney and Staples because they previously agreed to the search terms that Plaintiff is now seeking to enforce. Evidently, the cost of producing e-mails in response to those search terms is more burdensome than JCPenney or Staples anticipated. A wiser course for JCPenney and Staples would have been to move for protection. Instead, JCPenney and Staples have unilaterally undertaken the balancing analysis of Rule 26(b)(2)(C)(iii) on their own. Cf. Maness, 419 U.S. at 458 (regarding failure to produce documents, warning against “private determinations of the law”). Because JCPenney and Staples have provided only scant information about the potential value of the e-mail, their financial resources, and the amount in controversy, the Court finds JCPenney and Staples have failed to justify protection under Rule 26(b)(2) (C)(iii). Instead, full production is appropriate, particularly given that the parties negotiated and agreed upon a list of search terms. See 1/10/2011 e-mail from R. Griffin, Dkt. No. 470 at Ex. 27; Dkt. No. 470 at Exs. 28 (JCPenney custodians), 29 (Sears custodians), & 30 (Staples custodians); see also Dkt. No. 481 (Defendants' response brief, acknowledging that in “January 2011 ... agreement was reached on the search terms to be applied against designated custodians' email accounts”). Plaintiff's motion is therefore GRANTED AS MODIFIED as to e-mail production by JCPenney and Staples in accordance with the following: JCPenney and Staples shall produce e-mail in response to all of the search terms or search strings (and as to all of the custodians) agreed upon by the parties in January 2011. The expected $500,000 cost of reviewing and producing all of the e-mails at issue, however, warrants some consideration. JCPenney and Staples largely complain that the agreedupon search terms are generating e-mail that is irrelevant, cumulative, or of exceedingly low relevance. Although JCPenney and Staples request either limited production or monetary costshifting, costs can be saved by allowing JCPenney and Staples to produce the e-mail generated by the agreed upon search terms without screening out irrelevant e-mail. See Hudson v. AIH Receivable Mgmt. Servs., No. 10–2287–JAR–KGG, 2011 WL 1402224, at *2 (D.Kan. Apr.13, 2011) (“Defendant may produce unedited, unreviewed, and unredacted data files of all data in its possession, together with the name of the software needed to read the storage data. Plaintiff may then purchase the software and conduct her own searches.”). Plaintiff is not a competitor of JCPenney or Staples, and neither JCPenney nor Staples have expressed any concern about needless production of proprietary, confidential information. Moreover, the parties have an agreed Protective Order in the above-captioned case that restricts the handling of confidential information. See 4/2/2010 Protective Order, Dkt. No. 317 at ¶ 10. “If Defendant wishes to review the data to produce only responsive and unprivileged e-mails, Defendant will bear the cost of the search and the needed software.” Hudson, 2011 WL 1402224, at *2. *11 Admittedly, the Hudson court noted that unreviewed production “may not be practical” because the data may contain privileged e-mails, but presumably Defendants can conduct reasonable keyword-based searches for privileged material without needing to review every single e-mail. Wiginton v. CB Richard Ellis, Inc., 229 F.R.D. 568, 576 (N.D.Ill.2004) (“The responding party may also employ cost-saving measures, such as performing a key word search for a privilege review rather than examining each document.”); but see Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 262 (D.Md.2008) (finding that keyword-based privilege screen was not done with reasonable care). If any privileged material is produced despite reasonable efforts, the parties have a suitable “claw back” agreement in the agreed Protective Order entered in the above-captioned case. See 4/2/2010 Protective Order, Dkt. No. 317 at ¶ 8. Ultimately, JCPenney and Staples are in the best position to decide whether to review some or all of the e-mail at issue or to produce without review (subject to a reasonable keywordbased privilege screen), as discussed above. Plaintiff, in turn, then bears some of the risk that the agreed upon search terms are overbroad, thereby burdening Plaintiff with unwarranted search and review costs. If, in light of this ruling, the parties wish to confer and revise their agreed upon search terms to reduce the burden on all parties, presumably they are free to do so. Based on JCPenney's and Staple's unilateral decision to produce a subset of e-mails rather than file an appropriate motion for protection, the Court will order JCPenney and Staples to show cause why they should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion, including attorney's fees,” as to e-mail production. Fed.R.Civ.P. 37(a)(5)(A). As a final note, the Court rarely sees disputes regarding production of e-mail because generally, as in this case, the parties agree on search terms and custodians. This case is unusual—and therefore of limited precedential value—because the parties reached an agreement but then Defendants argued pursuant to Rule 26(b)(2) (C)(iii) that the resulting review and production would be overly burdensome. As discussed above, Defendants failed to carry their burden in that regard, and the Court has ordered production in response to all of the agreed upon search terms and custodians. To be clear, the Court has not nullified the agreement of the parties or otherwise allowed Defendants to renege. Had the parties agreed that Defendants would bear the burden of excluding irrelevant e-mails from their production, the Court would not have been inclined to excuse Defendants from that burden. The parties have not shown that the agreement reached in January 2011 contained any such provision. The foregoing procedure is intended to uphold the parties' agreement while also minimizing costs and providing all parties with incentives to conduct e-mail discovery efficiently. II. CONCLUSION *12 Plaintiff's Motion to Compel Discovery from Defendants J.C. Penney, Sears, and Staples (Dkt. No. 470) is hereby GRANTED IN PARTand DENIED IN PART as set forth above. By separate Order, the Court will order Defendants to show cause why they should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion, including attorney's fees,” as to Interrogatory No. 10, dates of use of user interfaces, and production of organizational charts. Fed.R.Civ.P. 37(a)(5)(A). By separate Order, the Court will order JCPenney and Staples to show cause why they should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion, including attorney's fees,” as to e-mail production. Fed.R.Civ.P. 37(a)(5)(A). By separate Order, the Court will order Staples to show cause why it should not “pay the [Plaintiff's] reasonable expenses incurred in making the motion, including attorney's fees,” as to source code. Fed.R.Civ.P. 37(a)(5)(A). By separate Order, the Court will order Plaintiff to show cause why he should not pay the Defendants' reasonable expenses, including attorney's fees, “incurred in opposing the motion” as to identification of user interface documents. Fed.R.Civ.P. 37(a) (5)(B). IT IS SO ORDERED.