Case Law

Potentially Relevant Documents, Marked as Non-responsive, Unable to Remain a Secret in Trade Secret Theft Case


Nachurs Alpine Sols., Corp. v. Banks, 2017 U.S. Dist. LEXIS 104778 (N.D. Iowa July 7, 2017) In this trade secret theft case, the plaintiff moved the court to compel the defendants to produce all electronically stored information that was relevant, believing relevant material was withheld. The defendants argued that the plaintiff’s motion was disproportional and the plaintiff had already obtained the information through depositions, requests for production of documents and interrogatories. The court turned to FRCP 26(b)(1) to determine if the documents requested by the plaintiff were within the scope of discovery. Under 26(b)(1), the burden of making a threshold showing of relevance is on the requesting party, then the burden shifts to the party resisting the motion to compel. “A mere statement of the objecting party that the request was overly broad, burdensome, oppressive, or irrelevant is not enough to have the court reject the order.” The court found there was a showing that the withheld documents by the defendants partially fell within the broad scope of discovery. However, the court also stated the plaintiff did not make a strong showing that the withheld documents were relevant, but added that such a showing would be challenging without actually reviewing the documents. Before ruling, the court noted that although it would accept that the defendants acted in good faith reviewing the documents, its confidence was colored by the defendants’ previous non-compliance with discovery obligations. The court found that it would be disproportionate to the case to require the defendants to review the documents again in order to identify wrongly withheld relevant documents according to the new search terms. Therefore, the court granted in part and denied in part the plaintiff’s motion to compel. The court ordered the defendants to produce all documents that were unresponsive under an “Attorney Eyes Only” label and the plaintiff would bear the cost of reviewing for relevance. Should the plaintiff find wrongfully withheld relevant documents, the plaintiff can then bring a motion for sanctions and recovery of attorney’s fees associated with reviewing the documents.

Keywords: scope of discovery, relevant, search terms, documents, culling