Timeliness, Showing of Incomplete Production, and “Sufficient to Show” Discovery Requests

In Sterling Computers Corporation v. International Busn. Machines Corp., 2024 WL 5168014 (D. S. Dak. Dec. 19, 2024), the court addressed: (1) whether the duty to meet and confer before moving to compel extends the time for filing such a motion; and, (2) how to show that an opponent’s production is incomplete.  It also enforced a request for documents “sufficient to show” a particular point and ordered “document correlation.”

First, Sterling’s argument that IBM’s motion to compel was untimely, failed. The scheduling order instructed parties to file motions to compel within 14 days of the issue arising.  IBM waited three months after the issue arose and more than two months after completion of the meet-and-confer requirement.  IBM argued that it was trying to work the issue out with Sterling during that time.  The Sterling court wrote that this court “certainly does not want to issue rulings that encourage parties to file ‘hair-trigger’ discovery disputes.”  Id. at *2 (citation omitted).

That makes sense, but it is not always a successful argument.  Cf. When Must a Motion to Compel Be Filed? (Aug. 26, 2024)(serving party should not run to court);  Discovery on Discovery (Apr. 29, 2022)(requiring factual predicate); with When Must a Motion to Compel Be Filed?  – Part 2 (Sep. 6, 2024)(While Turner did not move to compel sooner, because the Turner parties continued to engage in good faith negotiations to resolve the discovery disputes, that good faith did not equate to “good cause” for a late filing of the motion to compel.).

Second, IBM pointed to “the low number of custodial documents produced” as evidence of an incomplete production in this trademark dispute.  Id. at *1.  The court wrote that:

Mere speculation that an adversary is hiding what should be produced cannot by itself engage the court’s involvement…. But where the requesting party shows that the responding party’s “search design, search tools, [or] search terms … are manifestly unreasonable,” or that “the [responding] party has abdicated its responsibility,” court involvement is appropriate.

Id. at *2.  The Sterling court reviewed the record and: “Comparing the production of custodial documents in the low hundreds to the decades-long history of the company, the court is confident that more can be produced, and Sterling is ordered to search the entirety of its eight custodians’ emails for documents responsive.”  However, the Sterling court excluded all search results that merely contained Sterling’s name.  It also excluded documents in which IBM was the sender or recipient, because IBM could obtain them in its own records.  Id. at *3.

It is also interesting that IBM drafted “sufficient to show” discovery.  RPD 65 read: “DOCUMENTS sufficient to show the chain of title for [Sterling’s] ALLEGED MARKS, including but not limited to DOCUMENTS CONCERNING any sale, assignment, or transfer of ownership of [Sterling] or [Sterling’s] ALLEGED MARKS.”

It has long been recognized that “any and all” discovery is objectionable. Requests for “Any and All” Documents Are Obsolete – Update (Jul. 6, 2024)(suggesting alternative drafting); Requests for “Any and All” Documents Are Obsolete (Feb. 4, 2021)

Finally, the Sterling court ordered document correlation in response to IBM’s discovery.  Id. at *4. See Does Rule 34(b)(2)(E)(i) Mandate “Document Correlation” When ESI is Produced and, If So, Does Metadata Provide a “Work-Around” to Avoid the Costs of That Correlation Process? (Jul. 20, 2021).