KING PHARMACEUTICALS, INC., et al., Plaintiffs, v. EON LABS, INC., Defendant 04-CV-5540 (DGT) United States District Court, E.D. New York Filed November 18, 2008 Mann, Roanne L., United States Magistrate Judge MEMORANDUM AND ORDER CONCERNING BACKUP TAPES *1 In this patent infringement action, plaintiff King Pharmaceuticals, Inc. (“King”) seeks an order compelling defendant Eon Labs, Inc. (“Eon”) to restore data from a sample of recently discovered computer backup tapes. Specifically, King requests restoration of four out of approximately 454 backup tapes,[1] and has “offered to discuss cost-shifting of the restoration to alleviate any concerns about cost.” See Letter from F. Dominic Cerrito, Counsel for Plaintiff, to the Court (Oct. 29, 2008) (“10/29/08 Pl. Letter”), D.E. # 229, at 1. In addition to its request for an order compelling restoration of the backup tapes, King seeks an order compelling Eon to “clarify” information concerning the contents of the tapes, including definitions of terms contained in media notes produced by Eon detailing the general content of each tape, and explanations as to why certain information, such as the media notes, was not provided earlier in the litigation. See 11/10/08 Pl. Letter, at 1-2. For the reasons that follow, this Court grants King’s motion to compel the restoration of a sample of data from four of the 449 backup tapes identified by Eon. The specific tapes to be restored shall be chosen by King. Additionally, because its requests for clarifying information are irrelevant, inappropriate and/or moot, King’s motion to compel Eon to produce further information concerning the backup tapes is denied. DISCUSSION I. King’s Motion to Compel Restoration of the Backup Tapes A. Discoverability Pursuant to Rule 34 of the Federal Rules of Civil Procedure, a party may request discovery of “any designated documents or electronically stored information ... stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form[.]” Fed. R. Civ. P. 34(a)(1)(A). Unsurprisingly, courts have held that Rule 34 permits discovery “not only of electronic documents that are currently in use, but also of documents that may have been deleted and now reside only on backup disks.” Zubulake v. UBS Warburg LLC, 217 F.R.D. 309, 317 (S.D.N.Y. 2003) (citing Antioch Co. v. Scrapbook Borders, Inc., 210 F.R.D. 645, 652 (D. Minn. 2002); Simon Prop. Group L.P. v. mySimon, Inc., 194 F.R.D. 639, 640 (S.D. Ind. 2000)). Eon’s arguments against the discoverability of the backup tapes are unavailing. Eon first argues that King’s delay in requesting documents contained on the tapes is prejudicial. See Letter from Martin B. Pavane, Counsel for Defendant, to the Court (Nov. 3, 2008) (“11/3/08 Deft. Letter”), D.E. # 230, at 1. Although Eon is correct that King has known of the backup tapes’ existence since June 25, 2008, Eon continued to amend and correct information concerning the tapes through October 31, 2008. See Letter from F. Dominic Cerrito, Counsel for Plaintiff, to the Court (Nov. 5, 2008) (“11/5/08 Pl. Letter”), D.E. # 231, Ex. I. Moreover, King afforded Eon multiple opportunities to resolve this issue without resort to motions practice. See, e.g., 10/29/08 Pl. Letter, Ex. C, E, F-G, I. Given Eon’s delay in providing complete information concerning the content of the tapes, Eon should not be heard to complain that it was prejudiced by King’s delay in requesting restoration of the tapes. *2 Eon additionally argues that restoring the tapes will be unduly costly and burdensome. See 11/3/08 Deft. Letter, at 1-2. This argument, however, bears on whether the costs of production should be shifted, not on whether the data contained on the backup tapes are discoverable. See Zubulake, 217 F.R.D. at 316-20. Finally, Eon contends that King’s request is duplicative, and that all relevant electronic documents have already been produced. See 11/3/08 Deft. Letter, at 3. That contention, however, has little force, given Eon’s initial assertion that “[e]ven a general identification of the content of each readable tape ... cannot be made.”[2] 10/29/08 Pl. Letter, Ex. B, at 1. If Eon is unaware of the contents of the backup tapes, then Eon cannot claim that the contents are duplicative of previous disclosures. Simply put, Eon cannot have it both ways. For all of the foregoing reasons, King’s motion to compel restoration of a sample of backup tapes is granted. Eon shall restore four tapes of King’s choosing,[3] search those tapes for responsive documents,[4] and produce any relevant documents that are not privileged. Eon shall complete production of any responsive documents contained on the backup tapes selected by King on or before December 9, 2008.[5] B. Cost-Shifting The Federal Rules of Civil Procedure create a presumption that the party responding to a discovery request must bear the costs of production. SeeZubulake, 217 F.R.D. at 316 (citing Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 358 (1978)). Nevertheless, where compliance with a discovery demand imposes an undue burden or expense on the responding party, the court may issue orders protecting that party from such undue burden or expense, “ ‘including orders conditioning discovery on the requesting party’s payment of the costs of discovery.’ ” Id. (quoting Oppenheimer Fund, 437 U.S. at 358)). Courts employ a three-step inquiry to resolve disputes concerning the scope and cost of electronic discovery. See id. at 324. First, it must be determined whether consideration of cost-shifting is appropriate. See id. Where, as here, the requested documents are available only from backup tapes – which are expensive and labor-intensive to restore – it is particularly appropriate to consider cost-shifting. See id. at 317-20, 324. *3 The actual cost-shifting analysis occurs in the second and third steps of the three-step inquiry. See id. at 324. However, “because the cost-shifting analysis is so fact-intensive, it is necessary to determine what may be found on the inaccessible media[ ]” before engaging in that analysis. Id. Accordingly, “[r]equiring the responding party to produce responsive documents from a small sample of the requested backup tapes is a sensible approach in most cases.” Id. Here, a cost-shifting analysis is appropriate because the electronic documents sought by King are stored on inaccessible backup tapes. But because no backup tapes have been produced, an informed cost-shifting analysis is not possible at this juncture. Thus, it would be premature for the Court to order that the costs of producing relevant documents from the backup tapes be shifted to King, as Eon requests. King has indicated, however, that it is open to discussing cost-shifting with Eon. See 10/29/08 Pl. Letter, at 1. Accordingly, the parties are directed to meet and confer in good faith as to whether and to what extent King shall bear the costs of restoring the backup tapes so that they may be culled for responsive documents. II. King’s Request for Clarifying Information Concerning the Backup Tapes Finally, King has requested that this Court compel Eon “to clarify certain information it recently produced concerning its backup tapes.” 11/10/08 Pl. Letter, at 1. Specifically, King requests that Eon (1) explain why it chose to insert newly-discovered tapes in-between tapes 241 and 242, as opposed to some other location on the list of backup tapes provided to King; (2) explain when Eon learned that it had provided King with incorrect information regarding the backup tapes, who determined that the information was wrong, how that determination was made, and why it was not made at an earlier date; and (3) clarify previously produced information concerning the media notes, and explain why those notes were not produced at an earlier date. See 11/10/08 Pl. Letter, Ex. F, at 1. Having now responded to some aspects of King’s request for clarifying information, Eon contends that King’s motion has become moot. See11/14/08 Deft. Letter, Ex. 1. This Court agrees with Eon’s assessment. Moreover, to the extent that King is not satisfied with Eon’s responses, Eon is correct that King’s requests for information do not fit within any of the enumerated forms of discovery demands permitted by the Federal Rules of Civil Procedure. Further, even if King had presented its demands for clarifying information to Eon in an appropriate form (such as interrogatories), much of the information King requests is irrelevant to the prosecution of this case. Eon has disclosed relevant information concerning the backup tapes, has supplemented that information on a rolling basis, and has amended information that it found to be incorrect. To be sure, Eon’s delay in producing some of the information at issue, such as the media notes, is somewhat troubling. But details such as when Eon learned of the existence of supplemental or incorrect information and who at Eon made such discoveries simply are not relevant to this litigation. Simply put, King has sufficient information to make an informed decision as to which four backup tapes should be restored pursuant to this Order. Accordingly, King’s motion to compel Eon to provide clarifying information regarding the backup tapes is denied. CONCLUSION *4 For the foregoing reasons, King’s motion to compel Eon to restore data from a sample of four backup tapes and to produce any responsive documents contained therein is granted. King’s motion to compel Eon to provide clarifying information concerning the backup tapes is denied. SO ORDERED. Footnotes [1] Eon initially represented to King that there were only 253 tapes. That number later increased to 449 and, later still, to 454. SeeLetter from F. Dominic Cerrito, Counsel for Plaintiff, to the Court (Nov. 10, 2008) (“11/10/08 Pl. Letter”), ECF Docket Entry (“D.E.”) # 232, Ex. F, at 1. [2] Moreover, when Eon finally provided King with media notes outlining the general contents of the backup tapes, it did so with the caveat that it could “not represent that the media labels and media notes actually reflect the contents of the items to which they refer[.]” Letter from Martin B. Pavane, Counsel for Defendant, to the Court (Nov. 14, 2008) (“11/14/08 Deft. Letter”), D.E. # 237, Ex. 1, at 1. [3] Nothing in this Memorandum and Order should be construed to entitle King to the restoration of more than four tapes. King is encouraged to target the backup tapes that it believes will contain the most relevant responsive information. [4] The searches shall be conducted in accordance with the criteria that the parties have applied to other searches of electronic databases in this litigation. [5] The deadline for completion of fact discovery in this case is November 26, 2008. See 11/14/08 Order, D.E. # 239, at 2. The Court is mindful that the restoration of the backup tapes and production of responsive documents therefrom cannot be completed by that date. The extension of time permitted to complete restoration of the backup tapes, however, does notextend to any other outstanding discovery.