402.02 Limitations on Right to Discovery and on Electronically Stored Information
Fed. R. Civ. P. 26(b)(2)(A) When Permitted. By order, the court may alter the limits in these rules on the number of depositions and interrogatories or on the length of depositions under Rule 30. By order or local rule, the court may also limit the number of requests under Rule 36.
Fed. R. Civ. P. 26(b)(2)(B) Specific Limitations on Electronically Stored Information. A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost. On motion to compel discovery or for a protective order, the party from whom discovery is sought must show that the information is not reasonably accessible because of undue burden or cost. If that showing is made, the court may nonetheless order discovery from such sources if the requesting party shows good cause, considering the limitations of Rule 26(b)(2)(C). The court may specify conditions for the discovery.
The right to discovery is not unlimited. Even if the discovery sought by a party is relevant, it will be limited, or not permitted, where, inter alia, it is unreasonably cumulative or duplicative; or is unduly burdensome or obtainable from some other source that is more convenient, less burdensome, or less expensive; or "where harm to the person from whom discovery is sought outweighs the need of the person seeking discovery of the information." [ Note 1.]
For example, in those cases where complete compliance with a particular request for discovery would be unduly burdensome, the Board may permit the responding party to comply by providing a representative sampling of the information sought, or some other reduced amount of information which is nevertheless sufficient to meet the propounding party’s discovery needs. [ Note 2.]
In addition, a party will not be permitted to obtain, through a motion to compel, discovery broader in scope than that actually sought in the discovery request(s) to which the motion pertains. [ Note 3.]
Discovery of confidential commercial information is subject to the terms of the Board’s standard protective order, or an appropriate alternative protective agreement or order. [ Note 4.] For a further discussion of protective orders, see TBMP § 412.
Similarly, information protected by the attorney-client privilege is not discoverable unless the privilege has been waived [ Note 5.]; and documents and things prepared in anticipation of litigation or for trial by or for another party, or by or for that other party’s representative, are discoverable only upon a showing that the party seeking discovery has substantial need of the materials in the preparation of its case and that it is unable, without undue hardship, to obtain the substantial equivalent of the materials by other means. [ Note 6.]
Fed. R. Civ. P. 26(b)(2)(B) also provides for limitations regarding the discovery of electronically stored information (ESI). Specifically, a "party need not provide discovery of [ESI] from sources that the party identifies as not reasonably accessible because of undue burden or cost." [ Note 7.] Pursuant to the rule, when an adverse party seeks to compel the production of such material, the party resisting discovery must show that the material sought is "not reasonably accessible because of undue burden or cost." [ Note 8.] If that showing is made, the burden shifts to the requesting party to show good cause for the production of the not-reasonably-accessible electronically stored information. [ Note 9.] In deciding whether the requisite showing has been made, the Board will consider, as it would in any discovery dispute, whether (i) "the discovery sought is unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive;" (ii) "the party seeking discovery has had ample opportunity to obtain the information by discovery in the action;" or (iii) "proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit." [ Note 10.]
With respect to the adequacy of ESI production, there is an increasing focus on the question of proportionality and whether extensive ESI discovery is necessary and justified. [ Note 11.] In view of the Board’s limited jurisdiction, the narrowness of the issues to be decided by the Board, and the concerns existing with respect to excessive e-discovery, the burden and expense of e-discovery will weigh heavily against requiring production in most cases. Parties are to be precise in their requests and should have as their first consideration how to significantly limit the expense of such production. [ Note 12.]
NOTES:
1. See Micro Motion Inc. v. Kane Steel Co., 894 F.2d 1318, 13 USPQ2d 1696, 1699 (Fed. Cir. 1990); Fed. R. Civ. P. 26(b)(2). See also Haworth Inc. v. Herman Miller Inc., 998 F.2d 975, 27 USPQ2d 1469, 1472 (Fed. Cir. 1993) (must first seek discovery from party before burdening non-party); Katz v. Batavia Marine & Sporting Supplies Inc., 984 F.2d 422, 25 USPQ2d 1547, 1549 (Fed. Cir. 1993) (in response to non-party’s prima facie showing that discovery was burdensome, party did not meet burden of showing need for information sought); Domond v. 37.37, Inc., 113 USPQ2d 1264, 1268 (TTAB 2015) (large number of discovery requests was unduly burdensome, harassing, and oppressive); FMR Corp. v. Alliant Partners, 51 USPQ2d 1759, 1763 (TTAB 1999) (motion for protective order to prohibit deposition of "very high-level official of a large corporation" granted).
2. See, e.g., Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1439 (Fed. Cir. 2012) (Board did not abuse its discretion by refusing to strike plaintiff’s evidence where defendant failed to follow up on plaintiff’s offer to produce the evidence at a mutually agreeable time and place and in view of defendant’s failure to file a motion to compel); Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (representative samples of documents, including ESI, required for certain requests); British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB 1993) (where applicant gave partial answers and otherwise objected to requests as cumulative or burdensome but opposer did not file motion to compel, modify discovery requests, or otherwise pursue material, objection to evidence introduced by applicant at trial was overruled), aff’d, 35 F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994);Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718, 1720 (TTAB 1987) (production of representative sample was not appropriate where full production, that is, a total of eleven documents, was clearly not burdensome); Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 148 (TTAB 1985) (representative sample of invoices from identified calendar quarters is sufficient where there are so many items as to make respondent’s task unduly burdensome); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (permitted to identify reasonable number of corporate officers most knowledgeable); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (burden of calculating sales and advertising figures in round numbers for six categories of goods for each year since 1936 mitigated by limiting sales figures to five most recent years); Van Dyk Research Corp. v. Xerox Corp., 181 USPQ 346, 348 (TTAB 1974) (applicant allowed to produce ten representative samples of documents pertaining to the marketing of each copy machine or as alternative, may allow opposer’s representative to visit sites where relevant documents are kept); Mack Trucks, Inc. v. Monroe Auto Equipment Co., 181 USPQ 286, 288 (TTAB 1974) (allowed to furnish representative samples of advertisements).
3. Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980).
4. 37 C.F.R. § 2.116(g) (Board’s standard protective order automatically applies to all cases absent Board approval of a substitute); Fed. R. Civ. P. 26(c)(1)(G); Intex Recreation Corp. v. Coleman Co., 117 USPQ2d 1799, 1801 (TTAB 2016) (Board standard protective order is automatically in place, and party should have designated confidential documents under the appropriate tier of confidentiality or sought modification of the order); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1862 (TTAB 2001) (protective agreement would adequately protect against disclosure of trade secret manufacturing and technical information); Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (unless issue is abandonment or first use, party need not reveal names of its customers, including dealers, it being sufficient to identify classes of customers and types of businesses); Fisons Ltd. v. Capability Brown Ltd., 209 USPQ 167, 170 (TTAB 1980) (need for names of customers, as in case where issue is abandonment, outweighs justification for protecting customer confidentiality); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (protective order must contain provision that customer names will be revealed only to applicant’s attorneys). See also Sunkist Growers, Inc. v. Benjamin Ansehl Co., 229 USPQ 147, 148 (TTAB 1985) (protective orders available for confidential material); Varian Associates v. Fairfield-Noble Corp., 188 USPQ 581, 583 (TTAB 1975) ("While it is the Board’s policy not to require the disclosure of customer and mailing lists, a party may be asked to reveal the particular classes of customers or the types of businesses in which they are engaged."); J.B. Williams Co. v. Pepsodent G.m.b.H., 188 USPQ 577, 579 (TTAB 1975) (as a general rule, party need not furnish names of actual customers); Ortho Pharmaceutical Corp. v. Schattner, 184 USPQ 556, 557-58 (TTAB 1975) (discussing whether certain interrogatories seek proprietary or confidential matter); Miller & Fink Corp. v. Servicemaster Hospital Corp., 184 USPQ 495, 495-96 (TTAB 1975) (opposer need only reveal the classes of people to whom such goods sold under the mark are distributed and not the actual customer names); Cool-Ray, Inc. v. Eye Care, Inc., 183 USPQ 618, 621 (TTAB 1974) (names of applicant’s customers are confidential information and the need to protect customers from harm such as harassment outweighs disclosure).
5. Fed. R. Civ. P. 26(b)(5). See, e.g., In re Seagate Technology LLC, 497 F.3d 1360, 83 USPQ2d 1865, 1873 (Fed. Cir. 2007) (attorney-client privilege provides absolute protection from disclosure unless waived), abrogated on the other grounds by Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016; Genentech Inc. v. U.S. International Trade Commission, 122 F.3d 1409, 43 USPQ2d 1722, 1728 (Fed. Cir. 1997) ("Generally disclosure of confidential communications or attorney work product to a third party, such as an adversary in litigation, constitutes a waiver of privilege as to those items."); Red Wing Co. v. J. M. Smucker Co., 59 USPQ2d 1861, 1864 n.5 (TTAB 2001) (party making claim of privilege must do so expressly and otherwise describe the nature of the withheld information as provided in Fed. R. Civ. P. 26(b)(5)). See also Fed. R. Evid. 502 and Explanatory Note on Evidence Rule 502 (revised November 28, 2007) regarding attorney-client privilege and limitations on waiver.
6. Fed. R. Civ. P. 26(b)(3) and 26(b)(5). See, e.g., In re Seagate Technology LLC, 497 F.3d 1360, 83 USPQ2d 1865, 1874 (Fed. Cir. 2007) (work product protection is qualified and absent waiver may be overcome by a showing of need and undue hardship but a higher burden must be met to obtain that pertaining to mental processes), abrogated on other grounds by Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923, 195 L.Ed.2d 278 (2016); Goodyear Tire & Rubber Co. v. Tyrco Industries, 186 USPQ 207, 208 (TTAB 1975) (the fact that an attorney may have given an opinion to a client is not in and of itself privileged information; only the substance of the communication is considered privileged); Johnson & Johnson v. Rexall Drug Co., 186 USPQ 167, 171 (TTAB 1975) (opposer must provide discovery of matters, not privileged, relevant to the subject matter of the Board proceeding). See also Miles Laboratories, Inc. v. Instrumentation Laboratory, Inc., 185 USPQ 432, 434 (TTAB 1975) ("search reports, per se do not fall within the attorney-client privilege . . . [h]owever any comments or opinions provided by opposer’s attorney in relation thereto are privileged"); Amerace Corp. v. USM Corp., 183 USPQ 506, 507 (TTAB 1974) (trademark search report not privileged; comments or opinions of attorney relating thereto fall within attorney-client privilege); Goodyear Tire & Rubber Co. v. Uniroyal, Inc., 183 USPQ 372, 374-75 (TTAB 1974) (discussing attorney-client privilege and work product rule). See also Fed. R. Evid. 502 and Explanatory Note on Evidence Rule 502 (revised November 28, 2007) regarding work product and limitations on waiver.
7. Fed. R. Civ. P. 26(b)(2)(B).
8. Fed. R. Civ. P. 26(b)(2)(B). See, e.g., Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (opposer established that all of the specific materials applicant sought in response to specified requests were not reasonably accessible because of undue burden or costs).
9. Fed. R. Civ. P. 26(b)(2)(B). See, e.g., Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (applicant established that some of the requested documents should be produced before taking depositions).
10. Fed. R. Civ. P. 26(b)(1) and 26(b)(2)(C).
11. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1908 (TTAB 2011). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69951 (October 7, 2016) ("The Board continues to view the universe of ESI within the context of its narrower scope of jurisdiction, as compared to that of the federal district courts. The burden and expense of e-discovery will weigh heavily in any consideration.").
12. Frito-Lay North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1909 (TTAB 2011) (opposer not required to start its document production over where parties did not agree on ESI discovery protocol, applicant failed to show opposer’s methods were insufficient, and given the nature of the requests and issues involved).