1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 SAN JOSE DIVISION 7 8 COMPETITIVE ACCESS SYSTEMS, Case No. 25-cv-04595-PCP (VKD)

9 Plaintiff, ORDER RE NOVEMBER 21, 2025 10 v. DISCOVERY DISPUTE

11 APPLE INC., Re: Dkt. No. 79 Defendant. 12

13 14 Plaintiff Competitive Access Systems (“CAS”) and defendant Apple Inc. (“Apple”) ask the 15 Court to resolve their disputes concerning limits on printing source code and limits on the number 16 of email custodians and search terms. Dkt. No. 79. The Court finds these disputes suitable for 17 resolution without oral argument. Civil L.R. 7-1(b). 18 In this patent infringement action, the parties have agreed on most of the terms of a 19 Protective Order Regarding the Disclosure and Use of Discovery Materials (“Protective Order”) 20 and an Order Regarding Discovery of Electronically Stored Information (“ESI Order”). See Dkt. 21 Nos. 79-1, 79-2. Having reviewed the parties’ joint discovery dispute letter, the proposed orders 22 and disputed terms, and the applicable authority, the Court resolves these disputes as follows: 23 1. Protective Order 24 The parties disagree about whether the Protective Order should set presumptive limits on 25 the number of pages of source code that may be printed, and if so, what those presumptive limits 26 should be. Apple’s source code is the only source code the parties presently anticipate will be 27 subject to production. 1 when necessary to prepare court filings or pleadings or other papers (including at testifying 2 expert’s expert report),” and may not print source code “in order to review [it] elsewhere in the 3 first instance.” Dkt. No. 79-1 at ECF 15-16 (sec. 11(c)(v)). Apple argues that the Protective 4 Order should additionally specify that: CAS may not print more than five pages of a “continuous 5 block” of source code; more than five pages “shall be presumed to be excessive”; and CAS will 6 bear the burden “to demonstrate the need for such a printed copy.” Id.; Dkt. No. 79 at 4. In 7 addition, Apple argues that CAS should not be allowed to print more than a total of 20 pages of 8 source code, unless permitted by the Court.1 Dkt. No. 79-1 at ECF 16 (sec. 11(c)(v)); Dkt. No. 79 9 at 4. CAS argues that the Protective Order should not specify a presumptive limit on printing 10 consecutive pages of source code or a cap on the number of total pages that may be printed. Dkt. 11 No. 79-1 at ECF 16 (sec. 11(c)(v)); Dkt. No. 79 at 2. It acknowledges that under the agreed terms 12 of the Protective Order, Apple may object to the scope of CAS’s requests for printed source code, 13 and any disputes the parties do not resolve will need to be resolved by the Court. 14 Presumptive limits on printing source code are often useful, particularly where agreed 15 limits help the parties avoid unnecessary disputes, but such limits are not always warranted. Here, 16 the Court is informed that Apple is expected to produce source code for multiple accused features, 17 across multiple devices and services, for a period spanning more than ten years. See Dkt. No. 79 18 at 1; see also Dkt. No. 71 ¶¶ 1, 13, 14, 48, 49, 56, 58, 78. While the Court credits Apple’s 19 assertion that, as a general matter, its source code requires heightened protection, Apple does not 20 address how its proposed printing limits reasonably account for the number of features and 21 accused products at issue. Moreover, Apple’s proposal appears to treat the printing of source code 22 for current products the same as the printing of source code for products that are more than ten 23 years old. While such treatment may be appropriate, the Court expects that older source code may 24 not require the same safeguards as current source code. Also, Apple’s argument that its proposed 25 limits on source code printing are “especially justified to avoid the possibility of complete code 26

27 1 Apple’s proposal includes a “trade-in mechanism” that would permit CAS to return printed 1 repositories being available outside of Apple control” (Dkt. No. 79 at 4) is not persuasive, as there 2 is no indication that CAS contemplates printing Apple’s complete source code for any accused 3 product. In any event, the Court is unable to make any reasoned determination about appropriate 4 limits for printing consecutive pages or total pages on the record presented. See EPL Holdings, 5 LLC v. Apple Inc., No. 12-cv-04306 JST (JSC),

, at *6 (N.D. Cal. May 20, 6 2013) (“[T]he number of necessary pages of contiguous source code varies. Five pages may be 7 sufficient for a briefing to the court, but a number greater than five pages may be necessary when 8 deposing Apple’s experts. Thus, placing a blanket limit on the number of source code pages is 9 unhelpful.”). 10 For these reasons, the Court declines to adopt Apple’s proposed source code printing limits 11 at this time. The parties shall file a revised version of the Protective Order that omits the 12 bracketed text labeled “Apple’s Position” in section 11(c)(v) of the order (as well as the text 13 labeled “Plaintiff’s Position”). In addition, the parties are advised that the Court will require them 14 to comply with the undersigned’s discovery dispute resolution procedures for any dispute about 15 printing source code. See Standing Order for Civil Cases (sec. 4). Before submitting a revised 16 version of the Protective Order for the Court’s approval, the parties should make appropriate 17 modifications to section 13 of the Protective Order. See, e.g., Anoxia Med., Inc. v. Alembic, LLC, 18 No. 5:25-cv-05690-EKL, Dkt. No. 31 (sec. 6.3) 19 2. Custodians and search terms 20 The parties also disagree about whether the ESI Order should set a presumptive limit on 21 the number of email custodians and the number of search terms that will be used to search each 22 custodian’s email. 23 As the parties acknowledge, paragraph 10 of this District’s Model Stipulation and Order 24 Re: Discovery of Electronically Stored Information for Patent Litigation (“Model ESI Order”) 25 provides: 26 Each requesting party shall limit its email production requests to a total of five custodians per producing party for all such requests. 27 The parties may jointly agree to modify this limit without the additional custodians, upon showing a distinct need based on the 1 size, complexity, and issues of this specific case. Cost-shifting may 2 be considered as part of any such request. Paragraph 11 of the Model ESI Order further provides, in relevant part: 3 4 Each requesting party shall limit its email production requests to a total of five search terms per custodian per party. The parties may 5 jointly agree to modify this limit without the Court’s leave. The Court shall consider contested requests for additional search terms 6 per custodian, upon showing a distinct need based on the size, complexity, and issues of this specific case. 7 As the District’s website indicates, use of the Model ESI Order is “highly recommended” but 8 “voluntary.” See https://cand.uscourts.gov/rules-forms-fees/northern-district-guidelines/e- 9 discovery-esi-guidelines-model-stipulated-orders; see also Finisar Corp. v. Nistica, Inc., No. 13- 10 cv-03345-BLF (JSC),

, at *2 (N.D. Cal. Dec. 12, 2014) (endorsing view that 11 Model ESI Order is “not required, but instructive”). 12 The agreed portions of the parties’ ESI Order do not track the District’s Model ESI Order; 13 rather, the parties appear to have crafted their own proposed order suited to the circumstances of 14 this case. See Dkt. No. 79-2. Nevertheless, Apple argues that the Court should adopt the five- 15 custodian and five-search term per custodian (for a total of 25 search terms) limits set forth in the 16 Model ESI Order. Dkt. No. 79 at 5. Apple contends that these limits are presumptively 17 reasonable, given that substantial email discovery is usually not warranted in patent cases, and this 18 case is no exception. Id. at 5-6. CAS responds that each side should be permitted to obtain email 19 discovery from up to 10 custodians using a total of 50 search terms. Id. at 3. CAS argues that it 20 requires email discovery of more than five custodians because relevant email is likely to span 21 “multiple business units” and many discrete custodians, given the number of accused products 22 spanning multiple years. Id. Similarly, it argues that a limit of 25 search terms is insufficient to 23 capture relevant email “for a case that spans multiple technologies and dozens of products where 24 [evidence of] infringement, damages, secondary considerations, knowledge of infringement, and 25 encouraging others [to infringe] . . . could exist as early as 2009.” Id. 26 The Court agrees with Apple that questions of infringement, invalidity, and calculation of 27 1 email. However, email may contain information relevant to other issues that often arise in patent 2 cases, including objective indicia of nonobviousness, inducement, willfulness, and some of the 3 Georgia Pacific factors that bear on a determination of a reasonably royalty—all subjects that 4 CAS says are at issue in this case. See Dkt. No. 79 at 3; see also Dkt. No. 71. What matters is 5 whether a particular custodian is likely to have email relevant to one or more of these issues, and 6 whether discovery of such email is proportional to the needs of the case. 7 While the Model ESI Order posted on the District website generally adopts reasonable 8 limits on discovery of custodial email, judges in this District do not require strict adherence to the 9 five-custodian/five-search term per custodian limits that appear in the (recommended, but 10 voluntary) Model ESI Order. Indeed, in DCG Systems, Inc. v. Checkpoint Technologies, LLC, on 11 which Apple principally relies, Judge Grewal ultimately entered an order permitting each side to 12 obtain initial email discovery from 10 custodians (with the possibility of an additional five 13 custodians), applying 20 search terms per custodian (with the possibility of an additional five 14 search terms per custodian). DCG Systems, Inc. v. Checkpoint Technologies, LLC, No. 11-cv- 15 03792-PSG, Dkt. No. 33 (paras. 10, 11) (N.D. Cal. Nov. 2, 2011); see also Nevro Corp v. Bos. Sci. 16 Corp., No. 16-cv-06830-VC (MEJ),

, at *3 (N.D. Cal. June 22, 2017) (adopting 17 party’s proposal of seven custodians and seven search terms per custodian); Finisar, No. 13-cv- 18 03345-BLF (JSC), Dkt. No. 149 (paras. 9, 10) (N.D. Cal. Jan. 16, 2015 (adopting agreed limits of 19 eight custodians and 10 search terms per custodian). 20 As with the parties’ dispute about presumptive limits on source code printing, it is difficult 21 for the Court to determine on the record presented whether the presumptive limits on custodians 22 and search terms should be five and 25 or 10 and 50, or some other number. Nevertheless, for 23 purposes of resolving this dispute, the Court adopts CAS’s proposal for section 4, subsections (i) 24 and (ii), with modifications indicated below: 25 In effort to control costs and reduce the volume of email ESI that is not relevant to the matter, the parties will adhere to the following criteria: 26 27 i. Custodians. Each side shall limit its email production requests to no more than the ten (10) custodians likely to have the most relevant 1 must limit its custodians to fewer than ten (10) custodians if it cannot identify as many custodians in possession, custody, or control of any 2 relevant discoverable information likely to be found in custodial email, rather than in a centralized repository or other non-custodial source of 3 ESI... 4 ii. Search Terms. The parties will use mutually agreed upon search terms to filter for relevancy prior to review and production of email ESI. Each 5 Party shall limit its initial electronic searches to no more than fifty (50) 6 total search terms, to be divided among the elected custodians as the requesting Party sees fit. ... 7 8 Any disputes regarding whether a particular custodian has email that is properly the subject 9 of discovery in this action, or whether particular search terms may be applied, must be addressed 19 || using the undersigned’s discovery dispute resolution procedures. 11 TK

2 The parties must file a revised proposed Protective Order and revised proposed ESI Order 5 13 for the Court’s review and approval by December 19, 2025.. 14 IT IS SO ORDERED.

415 || Dated: December 5, 2025 16 * eaas Viyuin®, Lu □□□□□□ Virginia K. DeMarchi Z 18 United States Magistrate Judge 19 20 21 22 23 24 25 26 27 28