PLAINTIFF’S MOTION FOR CLARIFICATION OF AMENDED SCHEDULING ORDER

Plaintiff e.Digital Corporation (“e.Digital”) hereby moves the Court, pursuant to Fed. R. Civ. P. 60(a), to clarify three provisions in the Amended Scheduling Order entered on December 14, 2010. (Dkt. No. 329). In particular, e.Digital seeks clarification regarding:

1) Section 6(g)(4), regarding e-discovery cost shifting/sharing, which otherwise is governed by Rule 26(b)(2);

2) Section 8(b)(3), regarding time limits for depositions of the attorneys who prosecuted the patents-in-suit; and

3) Section 8(b)(5), regarding time limits for depositions of other third parties.

Alternatively, if the Court does not agree that clarifications of these provisions is necessary, e.Digital objects, pursuant to Fed. R. Civ. P. 72(a) and Local Rule 30.2, to these three provisions of the Amended Scheduling Order on the basis set forth below.

CERTIFICATE OF CONSULTATION

Pursuant to D.C.COLO.LCivR 7.1(A), e.Digital initiated the meet and confer process regarding the subject matter of this Motion on December 21 at which time its counsel conferred by telephone with counsel for Nokia, Inc. and Nokia Corporation. Then on December 28, e.Digital’s counsel re-raised the subject matter of this Motion with counsel for all parties via written correspondence in which e.Digital’s counsel confirmed his availability to further meet

and confer anytime between December 28 and January 3, the deadline for filing this Motion. A telephone conference was held on January 3, 2011 and counsel for all parties participated, except counsel for Imation and Summit. Participating defense counsel agree that the Amended Scheduling Order should be corrected with respect to §§ 8(b)(3) and (5), but disagree that any correction is necessary with respect to § 6(g)(4).

INTRODUCTION

On November 9, 2010, the parties filed a Joint Motion for Status Conference to address certain scheduling and discovery issues that were not previously addressed in the Court’s Scheduling Order for Markman Issues (Dkt. No. 277). The parties attached to the Joint Motion a proposed Amended Scheduling Order that contained both agreed provisions and competing proposals for certain provisions for which the parties could not reach an agreement. Sections

6(g), 8(b)(3) and 8(b)(5) were among the provisions for which the parties submitted competing proposals. (See proposed Amended Scheduling Order at Dkt. No. 314-1 (referred to as the “Proposed Order”)). On December 10, 2010, this Court held a Status Conference and on December 14, 2010, it entered the Amended Scheduling Order. (Dkt. No. 329). Upon further review, the parties’ (i.e., both e.Digital and Defendants) competing proposals regarding §§ 6(g), 8(b)(3) and 8(b)(5) may not have been sufficiently clear and delineated and, therefore, may have caused a clerical error, oversight or omission that led the Court to enter the Amended Scheduling Order in a way that did not resolve the parties disputes with respect to the subject matter of these provisions. First, § 6(g) at sub-part (4) of the Amended Scheduling Order, appears to incorporate only part of Defendants’ proposal regarding the cost shifting for electronic discovery and as such it conflicts with Rule 26(b) of the Federal Rules of Civil Procedure and related case law, which allows e-discovery cost shifting only after a showing of undue burden or cost. Second, § 8(b)(3) of the Amended Scheduling Order includes both e.Digital’s and Defendants’ competing proposals related to deposing prosecuting attorneys, which are contradictory. Third, § 8(b)(5) of the Amended Scheduling Order, includes both e.Digital’s and Defendants’ competing proposals regarding the time limits for Defendants to depose third parties, which are contradictory, but omits the parties’ agreed provision regarding the time limits for Plaintiffs to depose third parties. The clarification sought with respect to each of these sections are addressed in turn below.

LEGAL ARGUMENT AND CITATION TO AUTHORITY

1. Section 6(g)(4)

Section 6(g) relates to e-discovery parameters and sub-part (4) specifically relates to shifting the vendor cost for electronic discovery from the responding party to the requesting party. Generally, discovery costs, such as e-discovery vendor costs, are borne by the party responding to the discovery requests: “the presumption is that the responding party must bear the expense of complying with discovery requests . . . .” Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 358 (1978). However, under limited circumstances a Court may order that discovery costs associated with e-discovery can be shared or shifted following a showing of undue burden. Specifically, e-discovery cost sharing/shifting is addressed by Rule 26(b)(2) of the Federal Rules of Civil Procedure, which provides when a court may order the parties to share the cost of discovery, and in rare cases, may shift the cost of discovery to the requesting party pursuant to its authority to limit the scope and burden of electronic discovery. Likewise, Rule 26(c) enumerates certain criteria based on which the Court may enter a protective order to limit unreasonable discovery.1 Regardless of the specific Federal Rule applied, the Court must first find that the information sought by the requesting party would create an undue burden or expense on the responding party or that the burden or expense of the discovery outweighs its likely benefit. See, e.g., Ybanez v. Milyard, No. 07-cv-01976-PAB-MJW, 2009 U.S. Dist. LEXIS 42533, at *2-3 (D. Colo. May 6, 2009) (stating that “[u]nder the discovery rules, the presumption is that the responding party must bear the expense of complying with discovery costs, except a court may protect the responding party from undue burden or expense by shifting some or all of the costs of production to the requesting party.”) (J. Watanabe) (emphasis added); Helmert v. Butterball, LLC, No. 4:08CV00342, 2010 U.S. Dist. LEXIS 60777, at *34 (E.D. Ark. May 27, 2010) (a court should consider cost-shifting only when digital data is relatively inaccessible, such as in backup tapes); Sedona Principles for Electronic Document Production, Second Edition, www.thesedonaconference.org.

Against this backdrop, Defendants originally proposed that the Court include the following provisions in the e-discovery section of the scheduling order:

1. Compliance with F.R. Civ. P. 26(b)(2)(B). The parties shall meet and confer regarding the burden or expense of any proposed electronic discovery and the likely benefit of such discovery.

2. Costs. The party requesting electronic discovery shall pay the producing party’s vendor costs for producing such discovery.

(See Proposed Order, Dkt No. 314-1, at p. 12). By comparison, e.Digital did not propose any ediscovery cost shifting provision because such a provision is unnecessary in light of Rule 26. The Court in the Amended Scheduling Order included only half of Defendants’ proposal and stated: “The party requesting electronic discovery shall pay the producing party’s vendor costs for producing such discovery.” (See Amended Scheduling Order, Dkt No. 329, at p. 9).

Notably, Defendants’ proposed reference to Rule 26(b)(2)(B) and the need for the parties and the Court to consider whether electronic discovery requests present an undue burden is absent from the Amended Scheduling Order. The resulting statement in § 6(g)(4), when read in a vacuum, directly conflicts with Rule 26 in that it appears to order a shifting of e-discovery vendor costs without first requiring a showing that the information sought will create an undue burden or expense on the responding party. To be clear, the entirety of Defendants’ proposal is objectionable, as drafted, to the extent that part 2 relating to “Costs” is intended to shift the costs to the requesting party regardless of the outcome of the meet and confer set forth in part 1. In short, Rule 26 already sets forth the rules for cost shifting, and nothing else is needed in the Amended Scheduling Order.

In effect, the Court’s Amended Scheduling Order (as entered) reverses the general presumption that the responding party bears the costs of discovery and that “[a]ny principled approach to electronic evidence must respect this presumption[,]” and discovery cost-shifting should not be considered in every case. Zubulake v. UBS Warburg LLC, 217 F.R.D. 309, 317 (S.D.N.Y. 2003). The burden of overcoming this presumption rests with the party that responds to the discovery request. See 6 JAMESWM.MOORE ET AL., MOORE’S FEDERAL PRACTICE § 26.53 (Third Edition). To meet this threshold burden, “the responding party must identify, by category or type, the sources containing potentially responsive information that it is neither searching nor producing . . . . provid[ing] enough detail to enable the requesting party to evaluate the burdens and costs of providing the discovery and the likelihood of finding responsive information on the identified sources.” Advisory Committee Notes on 2006 Amendment to Fed. R. Civ. P. 26(b)(2). Moreover, courts have found that only certain types of information may be deemed inaccessible under Rule 26(b)(2)(B), including deleted data, disaster recovery/backup tapes, residual data, and legacy data. Zubulake, 217 F.R.D. at 318-19; see also Peskoff v. Faber, 240

F.R.D. 26, 31 (D.D.C. 2007) (“The obvious negative corollary of [Rule 26(b)(2)(B)] is that accessible data must be produced at the cost of the producing party; cost-shifting does not even become a possibility unless there is first a showing of inaccessibility.”) (emphasis in original). Accordingly, the Amended Scheduling Order should be corrected to clarify that § 6(4)(g) is subject to Rule 26(b)(2)(B) and that any cost shifting or sharing must be premised on a finding that the requested e-discovery is not reasonably accessible because of undue burden or cost. Such a clarification should be made by either: (i) removing Section 6(g)(4) and permitting Rule 26 to govern, or (ii) modifying Section 6(g)(4) to state: “The party requesting electronic discovery shall pay the producing party’s vendor costs for producing such discovery [if the Court finds pursuant to Rule 26(b)(2)(B) that certain requested electronic discovery at issue is not reasonably accessible because of undue burden or cost].”

2. Section 8(b)(3)

Section 8(b)(3) relates to the length of time the Defendants may depose the attorneys who prosecuted the patents-in-suit. e.Digital proposed:

Plaintiff’s proposal: Defendants, jointly, may take up to fourteen (14) common hours of deposition testimony of each prosecuting attorney of the Patents-in-Suit, such time to be split according to agreement of Defendants. Time taken by Defendants to depose the prosecuting attorneys is not counted against any of the above limitations regarding depositions of Plaintiff.

Defendants proposed:

Defendants’ proposal: Defendants, jointly, may take up to seven (7) common hours of deposition testimony of each prosecuting attorney of the Patents-in-Suit, such time to be split according to agreement of Defendants.

These proposals, which appear on page 16 of the Proposed Order (Dkt. No. 314-1), each contain different time limits. The Amended Scheduling Order contains both proposals and, therefore, it is unclear how many hours Defendants may use to depose the prosecuting attorneys. (See Dkt. No. 329 at p. 12). Accordingly, e.Digital requests that the Court correct the Amended Scheduling Order to clarify the length of time the Defendants may spend deposing the prosecuting attorneys.

3. Section 8(b)(5)

Section 8(b)(5) relates to the length of time the parties may depose third parties to which deposition subpoenas are issued. With respect to e.Digital, the parties agreed to a time limit:

(i) For third parties that are not either named inventors of the Patents-in-Suit, experts or prosecuting attorneys of the Patents-in-Suit, Plaintiff may take up to seventy (70) total hours of deposition testimony. (Proposed Order (Dkt. No. 314-1) at p. 18 (emphasis added)). With respect to Defendants, the parties could not reach an agreement and they submitted the following competing proposals:

(ii) Plaintiff’s proposal: For third parties that are neither inventors nor prosecuting attorneys, Defendants may jointly take up to one-hundred (100) hours of deposition testimony, such time to be split according to agreement by the Defendants.

Defendants’ Proposal: For third parties that are neither inventors nor prosecuting attorneys, Defendants may jointly take up to seventy (70) hours of deposition testimony, such time to be split according to agreement by the Defendants. In addition, each Defendant Group may take up to thirty-five (35) hours of deposition testimony of third parties. (Id. (emphasis added)). The Amended Scheduling Order, however, does not include any provision related to the agreed time allotted to e.Digital for third party depositions and includes both competing proposals for the time allotted to Defendants for third party depositions. (See Dkt. No. 329 at p. 14). Therefore, it is unclear how many hours e.Digital or Defendants have been allotted for third party depositions and e.Digital requests that the Court correct the Amended Scheduling Order (i) to include the agreed provision above related to the amount of time e.Digital may spend deposing third parties and (ii) to clarify the length of time the Defendants may spend deposing third parties.

CONCLUSION

For the reasons stated above, e.Digital requests the entry of a corrected Amended Scheduling Order, pursuant to Fed. R. Civ. P. 60(a), that clarifies the Court’s intent with respect to §§ 6(g) (e-discovery costs), 8(b)(3) (depositions of prosecuting attorneys) and 8(b)(5)(depositions of third parties) of the Amended Scheduling Order. If the Court does not believe a corrected Amended Scheduling Order is necessary or appropriate with respect to any or all of §§ 6(g), 8(b)(3) and 8(b)(5), e.Digital alternatively objects to the Amended Scheduling Order, pursuant to Fed. R. Civ. P. 72(a) and Local Rule 30.2, and moves the Court to modify the Amended Scheduling Order on the bases that §§ 6(g), 8(b)(3) and 8(b)(5) are clearly erroneous and § 6(g)(4) is contrary to law for the reasons set forth above. For the Court’s convenience, a proposed order that clarifies these three provisions of the Amended Scheduling Order in the manner requested by e.Digital is attached hereto as Exhibit A.

Respectfully Submitted,

Dated: January 3, 2011 FAEGRE & BENSON, LLP

By: /s/ Jared B. Briant

Natalie Hanlon-Leh

Jared B. Briant

3200 Wells Fargo Center

1700 Lincoln Street

Denver , CO 80203-4532

Telephone: 303-607-3500

Email: nhanlon-leh@faegre.com

Email: jbriant@faegre.com