IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

Autoscribe Corporation

Plaintiff, 

v. 

Repay Holdings Corporation, et al. 

Defendants. 

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Civil Action No. 2:23-CV-00349-JRG

JURY TRIAL DEMANDED

ORDER REGARDING E-DISCOVERY

The Court ORDERS as follows:

1. This order supplements all other discovery rules and orders. It streamlines Electronically

Stored Information (“ESI”) production to promote a “just, speedy, and inexpensive

determination” of this action, as required by Federal Rule of Civil Procedure 1.

2. This order may be modified in the court’s discretion or by agreement of the parties. The parties

shall jointly submit any proposed modifications within 30 days after the Federal Rule of Civil

Procedure 16 conference. If the parties cannot resolve their disagreements regarding these

modifications, the parties shall submit their competing proposals and a summary of their dispute.

3. A party’s meaningful compliance with this order and efforts to promote efficiency and reduce costs

will be considered in cost-shifting determinations.

4. Absent a showing of good cause, general ESI production requests under Federal Rules of Civil

Procedure 34 and 45, or compliance with a mandatory disclosure requirement of this Court, shall

not include metadata. However, fields showing the date and time that the document was sent and

received, as well as the complete distribution list, shall generally be included in the production if

such fields exist.

5. Absent agreement of the parties or further order of this court, the following parameters shall apply

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to ESI production: 

(a) General Document Image Format. Each electronic document shall be produced in

single-page Tagged Image File Format (“TIFF”) format. TIFF files shall be single page

and shall be named with a unique production number followed by the appropriate file

extension. Load files shall be provided to indicate the location and unitization of the TIFF

files. If a document is more than one page, the unitization of the document and any

attachments and/or affixed notes shall be maintained as they existed in the original

document.

(b) Text-Searchable Documents. No party has an obligation to make its production textsearchable; however, if a party’s documents already exist in text-searchable format

independent of this litigation, or are converted to text-searchable format for use in this

litigation, including for use by the producing party’s counsel, then such documents shall

be produced in the same text-searchable format at no cost to the receiving party.

(c) Footer. Each document image shall contain a footer with a sequentially ascending

production number.

(d) Native Files. A party that receives a document produced in a format specified above may

make a reasonable request to receive the document in its native format, and upon receipt

of such a request, the producing party shall produce the document in its native format.

(e) No Backup Restoration Required. Absent a showing of good cause, no party need

restore any form of media upon which backup data is maintained in a party’s normal or

allowed processes, including but not limited to backup tapes, disks, SAN, and other forms

of media, to comply with its discovery obligations in the present case.

(f) Voicemail and Mobile Devices. Absent a showing of good cause, voicemails, PDAs and

mobile phones are deemed not reasonably accessible and need not be collected and

preserved.

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6. General ESI production requests under Federal Rules of Civil Procedure 34 and 45, or

compliance with a mandatory disclosure order of this court, shall not include e-mail or other

forms of electronic correspondence (collectively “e-mail”). To obtain e-mail parties must

propound specific e-mail production requests.

7. E-mail production requests shall be phased to occur timely after the parties have exchanged

initial disclosures, a specific listing of likely e-mail custodians, a specific identification of the

fifteen most significant listed e-mail custodians in view of the pleaded claims and defenses,1

infringement contentions and accompanying documents pursuant to P.R. 3-1 and 3-2,

invalidity contentions and accompanying documents pursuant to P.R. 3-3 and 3-4, and

preliminary information relevant to damages. The exchange of this information shall occur at

the time required under the Federal Rules of Civil Procedure, Local Rules, or by order of the

court. Each requesting party may also propound up to five written discovery requests and take

one deposition per producing party to identify the proper custodians, proper search terms, and

proper time frame for e-mail production requests. The court may allow additional discovery

upon a showing of good cause.

8. E-mail production requests shall identify the custodian, search terms, and time frame. The

parties shall cooperate to identify the proper custodians, proper search terms, and proper time

frame. Each requesting party shall limit its e-mail production requests to a total of eight

custodians per producing party for all such requests. The parties may jointly agree to modify

this limit without the court’s leave. The court shall consider contested requests for additional

or fewer custodians per producing party, upon showing a distinct need based on the size,

complexity, and issues of this specific case.

9. Each requesting party shall limit its e-mail production requests to a total of ten search terms

1 A “specific identification” requires a short description of why the custodian is believed to be significant. 

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per custodian per party. The parties may jointly agree to modify this limit without the court’s 

leave. The court shall consider contested requests for additional or fewer search terms per 

custodian, upon showing a distinct need based on the size, complexity, and issues of this 

specific case. The search terms shall be narrowly tailored to particular issues. Indiscriminate 

terms, such as the producing company’s name or its product name, are inappropriate unless 

combined with narrowing search criteria that sufficiently reduce the risk of overproduction. A 

conjunctive combination of multiple words or phrases (e.g., “computer” and “system”) 

narrows the search and shall count as a single search term. A disjunctive combination of 

multiple words or phrases (e.g., “computer” or “system”) broadens the search, and thus each 

word or phrase shall count as a separate search term unless they are variants of the same word. 

Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the 

production and shall be considered when determining whether to shift costs for 

disproportionate discovery. 

10. Pursuant to Federal Rule of Evidence 502(d), the inadvertent production of a privileged or

work product protected ESI is not a waiver in the pending case or in any other federal or state

proceeding.

11. The mere production of ESI in a litigation as part of a mass production shall not itself constitute

a waiver for any purpose.

12. Except as expressly stated, nothing in this order affects the parties’ discovery obligations under

the Federal or Local Rules.

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____________________________________

RODNEY GILSTRAP

UNITED STATES DISTRICT JUDGE So ORDERED and SIGNED this 31st day of May, 2024.

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