United States District Court, E.D. Texas, Sherman Division
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE
before the Court is Plaintiffs' Motion to Compel
Production of Computer Images (Dkt. #49). After reviewing the
relevant motion and pleadings, the Court finds the motion
should be granted.
motion is before the Court as Plaintiff's second
discovery related motion filed in less than two weeks. The
first motion dealt with several alleged discovery issues and
the Court entered a memorandum opinion and order (Dkt. #61).
The present motion deals with a single issue: Whether the
Defendants must turn over a mirror image of all computers
involved in development of Defendants' vendor compliance
application. The Court grants the motion with modification.
issue stems from a deficiency of the source code produced by
Defendants so far. Defendant Enterprise Risk Control, LLC
(“Enterprise”) began developing a vendor
compliance application sometime in 2012 after Lonnie Derden
(“Derden”) left his employment with Plaintiffs.
Around the same time, Tom Bean (“Bean”) also left
his job with Plaintiffs and began his own software
development company, IDC Software LLC (“IDC”).
Sometime in 2012, Derden hired Bean and IDC to create a
vendor compliance application. Derden instructed Bean that he
wanted an application that was “completely
different” than Plaintiffs' application. Bean
worked on this code for Enterprise until Enterprise hired him
as a full-time employee in July 2013. According to Bean's
affidavit, when he joined Enterprise he transferred his code
onto Enterprise's computers and removed the code from
December 19, 2016, and according to the Agreed Protective
Order and Source Code Protocol (Dkt. #34), Defendants made
their source code available to Plaintiffs. The portions of
code that Defendants produced account for all development
starting July 3, 2013 until present day. Plaintiffs
investigated the source code and identified comments made by
“ERC Development” on July 23, 2012 and comments
by Bean on October 23, 2012 and April 28, 2013. Defendants
have not produced the source codes encompassing these dates.
Defendants insist that the pre-July 2013 source code was
destroyed and therefore cannot be produced.
March 1, 2017, Plaintiffs filed this motion seeking a mirror
image of all computers used in the development of
Defendants' vendor compliance application (Dkt. #49). On
March 15, 2017, Defendants filed a response (Dkt. #56). On
March 22, 2017, Plaintiffs filed a reply (Dkt. #58).
hesitate to authorize direct access to an opposing
party's electronic storage device. A.M. Castle &
Co. v. Byrne, 123 F.Supp.3d 895, 900 (S.D. Tex. 2015).
As a threshold matter, the requesting party must show that
the responding party has somehow defaulted in its obligation
to search its records and produce the requested data. In
re Weekley Homes, L.P., 295 S.W.3d 309 (Tex. 2009). The
requesting party should also show that the responding
party's production “has been inadequate and that a
search of the opponent's [electronic storage device]
could recover deleted relevant materials.”
Diepenhorst v. City of Battle Creek, No.
1:05-CV-734, 2006 WL 1851243, at *3 (W.D. Mich. June 30,
have however been more open to allowing access to computer
files when the computer was used to download trade secrets,
the misappropriation of which is at issue in the suit.
A.M. Castle & Co., 123 F.Supp.3d at 901.
However, only a qualified expert should be afforded such
access. Diepenhorst, 2006 WL 1851243, at *2.
Consistent with the prohibition against fishing expeditions,
a court may not give the expert carte blanche
authorization to sort through the responding party's
electronic storage device. See In re Ford Motor Co.,
345 F.3d 1315, 1317 (11th Cir. 2003).
the Court does not necessarily agree with Plaintiffs'
characterization of facts and of Defendants' behavior
during discovery, the Court nevertheless finds good cause
that limited forensic imaging should be conducted because a
search of Defendants' electronic devices could recover
important deleted materials.
Court does not agree with Plaintiffs when they argue that
Defendants have changed their theory on whether more code
exists. The letter from Defendants' counsel Joseph Regan
(“Regan”) stated, “There is nothing more,
and no earlier versions, ' the [Enterprise] has to
produce” (Dkt. #49, Exhibit C at p. 3). The fact that
Plaintiffs' expert David Cowen found comments dating back
to October 2012 does not refute this assertion (See
Dkt. #49, Exhibit D at p. 4). Even though somebody clearly
worked on the code back in October 2012, the Court already
recognized that Defendants' have provided sufficient
explanation of good faith destruction of pre-July 2013 code
(Dkt. #61 at p. 15). Therefore, Defendants take a consistent
position by claiming that even if changes were made to code
before July 2013, they do not have possession of that code
because Bean destroyed the code when he joined Enterprise in
the Court does not find that Defendants have been egregiously
uncooperative in discovery. Plaintiffs cite their own motion
to compel to support their assertions that Defendants have
not complied with discovery requests (See Dkt. #49
at p. 5). ...