Request for Expedited Forensic Imaging Debated in Intellectual Property Case

Ainstein AI, Inc. v. ADAC Plastics, Inc.

D. Kan. 5/19/23 7:00

Why This Case Is Important

E-Discovery grows more complex each day. It’s important that legal teams be cognizant of the metadata that lives within their electronically stored information (ESI) and that they be prepared to produce metadata before Rule 26(f) meet and confers if warranted

Overview

In this intellectual property case, the plaintiff alleged that three of the defendant’s employees downloaded tens of thousands of documents containing trade secrets from the plaintiff’s Google Drive, to which they were given access as part of a joint venture. The plaintiff moved for expedited discovery and a forensic examination of the computers, storage devices, and cellphones of those three employees and the individual with defendant responsible for its relationship with a relevant subcontractor.

The defendant argued expedited discovery was not warranted because it had already implemented a litigation hold and would comply with all of its preservation obligations. However, the plaintiff argued that early forensic imaging was necessary to preserve the system logs and document metadata crucial to the heart of the case.

Ruling

• Request for Production Granted. The magistrate judge rejected the defendant’s argument that the plaintiff needed to make a strong showing to justify expedited discovery and ordered forensic imaging pursuant to an appropriate ESI protocol and the existing protective order in the case. However, the magistrate judge noted that courts remain cautious about ordering forensic imaging and “guard against undue intrusiveness” and “extremely broad” requests.
• Personal Devices Excluded. The magistrate judge found plaintiff’s allegations that defendant’s employees downloaded trade secret materials provided good cause for imaging work computers and storage devices “to preserve information relevant to showing whether Defendant misappropriated the intellectual property at issue.” Personal cellphones, however, were not included in the order because it was unclear whether they were actually used for work purposes, they likely contained a “tremendous volume” of personal information that would not be relevant to the case, the request was overly broad and unduly burdensome, and the personal cellphones may not be under the control of defendant.
• Forensic Imaging Is Reasonable. The court explained that, although discovery typically doesn’t commence before the parties have conferred as required by Rule 26(f), the plaintiff demonstrated good cause and the request for forensic imaging, as further limited by the order, was “reasonable and proportional to the needs of this case.”

Expert Perspective

by: Patricia E. Antezana, Counsel, Reed Smith

In this trade secrets case, plaintiff offered to pay the third-party vendor for forensic imaging services, which the Magistrate Judge allowed. When cost is an issue, it may be reasonable and may further discovery efforts to offer to pay, or seek payment of, such costs as an additional incentive for the opposing party or the court to allow certain discovery.