No. 02 C 4721 Page 3

drives that it has a reasonable belief contained information relevant to the use of the EDBA
source code. Defendants do not dispute that they had the source code in their possession,
making it likely that a thorough search of the drives will lead to the discovery of some relevant
information. The search will likely reveal what uses defendants made of the source code and
whether they disclosed it to other parties. Defendants are clearly in the best position to control
the costs and scope of the consultation and have the incentive to do so. The review is largely
for defendants’ protection and benefit, and shifting the costs of the consultation would remove
all incentive for them to narrowly tailor the review of the drives.

In Byers and Rowe, courts decided to shift some costs of discovery requests when the

actual physical disclosure of the information would prove very costly. Byers, 2002 WL

1264004 at *11; Rowe, 205 F.R.D. at 431. Defendants here seek to recover the costs of their

preventive measures undertaken before the actual disclosure of the information to plaintiff.
These costs are analogous to the review of documents for privileged information and should
not be shifted to the requesting party. See Byers, 2002 WL 1264004 at *12.
CONCLUSION
For the foregoing reasons, defendants’ motion to require plaintiff to pay for its

electronic discovery requests is denied.

Seine Br Moo

JAMES B. MORAN

Shor Judge, U. S. District Court
ia 2, 2003.



Minute Qgder Form (06/97) ( -
United States District Court, Northern District of Illinois >)
Name of Assigned Judge James B. Moran Sitting Judge if Other
or Magistrate Judge than Assigned Judge
CASE NUMBER 02 C 4721 DATE 6/2/2003
CASE Computer Associates etc. Vs. Quest Software, Inc. et al.
TITLE

[In the following box (a) indicate the party filing the motion, e.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature
MOTION: of the motion being presented.]

Memorandum Opinion and Order

DOCKET ENTRY:
(1) i} Filed motion of [ use listing in “Motion” box above.)
(2) im Brief in support of motion due ,
(3) gq Answer brief to motion due__—. Reply to answer brief due
(4) Q Ruling/Hearingon___—_sset fora
(5) ag Status hearing{[held/continued to] [set for/re-sct for]on___—_ssetfor at
(6) im} Pretrial conference{held/continued to] [set for/re-set for]on__—ssetfor_ at.
(7) a Trial[set for/re-set for]on___at
(8) a [Bench/Jury trial] [Hearing] held/continued to____at
(9) Qo This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OFRCP4(m) OLocal Rule 41.1 OFRCP41(a)(1) OO FRCP41(a)(2).
ao [Other docket entry) | Enter Memorandum Opinion and Order. Defendants’ motion to require

plaintiff to pay for its electronic discovery requests is denied.

(11) @ [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required. umber of notices

Notices mailed by judge’s staff. JUN 3 2003

Notified counset by telephone.

gate docketed_
wv | Docketing to mail notices.

Mail AO 450 form, ED-7 docketing depuly initials a“
Copy to judge/magistrate judge. FILED FOR DOCKETING

courtroom 03 Ju-2 PH 2 38 date mailed noti

WAH deputy's
initials
" Date/tinie keteived 7
_U Sn Bide RoRCOURT mailing depuly initials



IN THE UNITED STATES DISTRICT COURT DOCKETED
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION JUN g 2003

COMPUTER ASSOCIATES INTERNATIONAL,
INC., a Delaware corporation,

Plaintiff,

vs. No. 02 C 4721

)
)
)
)
)
}
QUEST SOFTWARE, INC., a California corporation, )
MICHAEL J. FRIEL, an Illinois resident, DEBORAH )
A, JENSON, an Illinois resident, ROBERT M. )
MACKOWIAK, an Illinois resident, and ELIZABETH )
W. WAHLGREN, an Illinois resident, )
)

)

Defendants.

MEMORANDUM OPINION AND ORDER

Plaintiff Computer Associates International, Inc. (CA) brought this action against
Quest Software, Inc. (Quest) and Quest employees Michael Friel, Deborah Jenson, Robert
Mackowiak and Elizabeth Wahlgren, alleging copyright infringement and trade secret
misappropriation arising from improper use of CA’s Enterprise Database Administration
(EDBA) software source code. Plaintiff asked defendants to make certain computer hard
drives available for electronic imaging and, after imaging the drives, defendants filed this
motion to require CA to pay for computer consultation that is necessary to prepare the drives
for disclosure. For the following reasons, defendants’ motion is denied.

BACKGROUND

As part of discovery, plaintiff asked defendants to make available for electronic

imaging the work and home computer hard drives of six Quest employees, including the

named defendants, Imaging will allow plaintiffs to search for and reconstruct files that have


No, 02 € 4721 Page 2

been deleted from the computers and would be otherwise undiscoverable. Pursuant to
plaintiff's request, defendants gathered eleven hard drives for disclosure to plaintiff.

After initially imaging the hard drives, defendants concluded that eight of the eleven
drives contain privileged information relating directly to this litigation and objected to their
production until the privileged information can be located and permanently deleted. Quest
contacted a third party computer consultant to make copies of the eight images and search for
privileged communications. After reviewing the files with their attorneys, defendants plan to
remove the privileged information from the images and indicate to plaintiff where the removed
information was previously located. The cost of this consulting process is estimated at between
$28,000 and $40,000 for the eight drives.

DISCUSSION

If the burden of a discovery request outweighs the likely benefit, we may shift all or
part of the cost of production to the requesting party. Byers v. Minois State Police, 2002 WL
1264004, *11 (N.D. Il. 2002). In determining whether costs should be shifted, we should take
into account the following factors: (1) the specificity of the discovery requests; (2) the
likelihood of discovering relevant information; (3) the availability of such information from
other sources; (4) the purposes for which the responding party maintains the information; (5)
the relative benefit to both parties of the discovery; (6) the total cost of production; (7) the
relative ability of each party to control the costs; and (8) the resources available to each party.

Rowe Entertainment, Inc. v. William Morris Agency, Inc., 205 F.R.D. 421, 429 (S.D. N.Y.

2002).

Plaintiff’s requests were as specific as possible — it asked only for images of the hard