In Masimo v. Sotera Wireless, Case No. 19cv1100 (S.D. California Nov.16, 2020), before the Court was the parties’ Joint Motion for Determination of Discovery Dispute where Plaintiff sought to compel a production of emails from Defendant Sotera’s former CEO.
The case arose from Plaintiff’s allegation that Defendant infringed on nine of its patents. Plaintiff also alleged that Defendant Sotera was an alter ego of another named Defendant Hon Hai Precision Industry Co (“Foxconn”) because the two Defendants shared a unity of interest and ownership, as well as commingled their employees including the former CEO, whose emails were the subject of the discovery dispute before the Court.
In dispute was the use of search terms. Plaintiff requested that Defendants apply the following search terms against the former CEO’s custodial file:
1. Masimo!; 2. “Hon Hai” OR HonHai OR Foxconn; 3. Patent!; 4. (alarm limit!) OR (alarm threshold); 5. “Terry Guo” OR “T. Guo” OR “Guo, Terry”; TIMEFRAME: 2013-present.
The parties disputed the inclusion of the search term “Foxconn” which Defendant claimed was too board and burdensome to review and produce. Plaintiff argued that the search string was aimed at relevant documents that would go towards establishing Foxconn’s infringement and relationship with Sotera. Defendants countered that the term “Foxconn” was of minimal relevance to the patent lawsuit and that it would cost of $18,000 to review from just the one term.
The Court, however, acknowledged that while the case was primarily a patent ligation lawsuit, Plaintiff also asserted alter ego and agency claims, and that the former CEO appeared to have significant roles in executive positions at both defendant companies, as well as the fact that the term “Foxconn” was used to represent Hon Hai as a registered trade name and on its corporate website and annual reports.
The Court further acknowledged that while the search term including Foxconn was fairly broad, that had to be balanced against the breadth of evidence that could be used towards establishing an alter ego or agency theory. Moreover, the parties did not present any suggestions on how to tailor the term further. And, in absence of further tailoring and in light of the former CEO’s central position, the Court held that the balance tipped in favor of production of the emails and granted the motion to compel the production of the former CEO’s emails responsive to the search terms, including the search term “Foxconn.”