Preview
RAJIV DHARNIDHARKA (Cal. Bar No. 234756)
rajiv.dharnidharka@dlapiper.com
JEANETTE BARZELAY (Cal. Bar No. 261780)
jeanette.barzelay@us.dlapiper.com
MICAH A. CHAVIN (Cal. Bar No. 313634)
micah.chavin@dlapiper.com
DLA PIPER LLP (US)
3203 Hanover Street, Suite 100
Palo Alto, CA 94304-1123
Tel: 650.833.2000
Fax: 650.833.2001
Attorneys for Defendant
Sycomp A Technology Company Inc.
SUPERIOR COURT OF THE STATE OF CALIFORNIA
COUNTY OF SANTA CLARA
TRACE3, LLC, a California limited liability CASE NO. 23CV415833
company,
DEFENDANT SYCOMP A
TECHNOLOGY COMPANY INC.’S
Plaintiff, OPPOSITION TO TRACE3’S MOTION
TO COMPEL COMPLIANCE WITH
COURT ORDER AND FURTHER
RESPONSES TO SPECIAL
SYCOMP A TECHNOLOGY COMPANY, INTERROGATORIES NOS. 1, 2, 4, 21, 22,
INC., a California corporation; TIMOTHY 24, 25, 26, 27; REQUESTS FOR
CORDELL, an individual; GEOFF PETERSON, ADMISSIONS NOS. 22, 23, 24;
an individual; DEVIN TOMCIK, an individual; REQUESTS FOR PRODUCTION 1-56;
JOHN BARNES, an individual, and DOES 1- AND FOR SANCTIONS
inclusive;
Date: December 15, 2023
Time: 9:00 a.m.
Defendants. Dept: 1
Action Filed: May 12, 2023
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
TABLE OF CONTENTS
Page
I. INTRODUCTION ............................................................................................................. 4
II. FACTUAL BACKGROUND ............................................................................................ 5
A. Sycomp is diligently complying with the Court’s 8/7 and 8/15 discovery orders. 5
B. Trace3 seeks reconsideration of the 8/15 Order and ignores Sycomp. .................. 6
C. Trace3 fails to move for a preliminary injunction and lets the TRO lapse. ........... 7
D. Trace3 fails to meet and confer with Sycomp as ordered at the IDC. ................... 9
III. ARGUMENT ..................................................................................................................... 9
10
A. Sycomp’s privilege and work product objections should be sustained.................. 9
11
B. Sycomp’s responses to RFPs 1-52 are complete and proper. .............................. 14
12
13 1. Sycomp’s reference to the 8/15 Order is not an improper objection. ...... 14
14 2. Lack of control over another’s information is a proper response. ........... 15
15 3. Sycomp should not be compelled to respond further to SI 6. .................. 15
C. Trace3 fails to show that Sycomp’s rolling production is deficient..................... 16
16
D. Sycomp has not “misused” the discovery process. .............................................. 17
17
IV. CONCLUSION ................................................................................................................ 18
18
19
20
21
22
23
24
25
26
27
28
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
TABLE OF AUTHORITIES
Page(s)
ASES
Coito v. Super. Ct.,
54 Cal.4th 480 (2012) ...............................................................................................................12
County of Los Angeles v. Super. Ct.,
222 Cal.App.3d 647 (1990).......................................................................................................12
In re Enforcement of Subpoena Issued by FDIC,
2011 WL 2559546 (N.D. Cal. June 28, 2011) ..........................................................................13
FormFactor, Inc. v. Micro-Probe, Inc.,
2012 WL 1575093 (N.D. Cal. May 3, 2012) ............................................................................14
Jackson v. Cty. of Sacramento,
10 175 F.R.D. 653 (E.D. Cal. 1997) ........................................................................................13, 14
11 Jensen v. BMW of N. Am., LLC,
12 328 F.R.D. 557 (S.D. Cal. 2019)...............................................................................................13
13 Liberty Mut. Ins. Co. v. Super. Ct.,
10 Cal. App. 4th 1282 (1992)....................................................................................................13
14
Romero v. Allstate Ins. Co.,
15 271 F.R.D. 96 (E.D. Pa. 2010) ..................................................................................................14
16 Scherer v. FCA US, LLC,
2021 WL 5494463 (C.D. Cal. Nov. 23, 2021) ..........................................................................13
17
18 United States v. Nobles,
422 U.S. 225 (1975) ..................................................................................................................11
19
Unzipped Apparel, LLC v. Bader,
20 156 Cal. App. 4th 123 (2007)....................................................................................................17
21 Uschold v. Carriage Servs., Inc.,
2019 WL 8298261 (N.D. Cal. Jan. 22, 2019) ...........................................................................13
22
23 Wellpoint Health Networks, Inc. v. Super. Ct.,
59 Cal. App. 4th 110 (1997)......................................................................................................12
24
TATUTES
25
Code Civ. Proc. § 2018.020 ............................................................................................................10
26
Code Civ. Proc. § 2018.030(a) ........................................................................................................11
27
Code of Civil Procedure section 2019.210 .......................................................................................5
28
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
I. INTRODUCTION
Trace3’s motion to compel is a hodgepodge of grievances and failed legal arguments that
aim to show that Sycomp is shirking its discovery obligations and withholding information from
Trace3. But Trace3’s motion does not match reality. Sycomp has substantively responded to over
150 requests served by Trace3, has produced roughly 10,000 documents (totaling over 30,000
pages), and is continuing to review and produce documents on a rolling basis—as it has told Trace3
repeatedly since August. In particular, Sycomp’s latest discovery responses served on October 27
confirm the salient facts that (i) Sycomp has conducted a diligent search of its systems and devices
for Trace3’s alleged trade secret information, and (ii) Sycomp does not have the Category 1 “Build
10 Document” Compilation or any of the documents identified in trade secret Categories 2, 3, or 4. In
11 other words, Sycomp’s verified responses confirm that none of Trace3’s alleged trade secrets were
12 brought to Sycomp by any former Trace3 employee.
13 These facts should be a game-changer and Trace3 should have dismissed its suit—but
14 Trace3’s motion ignores these facts entirely. Instead, Trace3 argues once again that it is being
15 deprived of necessary discovery simply because the discovery it has received does not support its
16 claims (and in fact proves them false), because Sycomp’s rolling production is not yet complete,
17 and because Sycomp has asserted proper objections to Trace3’s “discovery on discovery” requests
18 inquiring into its counsel’s processes, decision-making, and analyses. Trace3’s arguments fail.
19 First, the Court cannot compel Sycomp to disclose its counsel’s mental impressions and
20 processes related to its investigation efforts, and Trace3 provides no legal or factual basis to
21 overrule Sycomp’s privilege and work product objections.
22 As to the RFPs and Sycomp’s document production, there is nothing to compel. Sycomp
23 told Trace3 that it was not withholding responsive documents based on the Court’s August 15 Order
24 and the limitations therein (except as to the express limitations to RFPs 1-2 and SI 4), and Sycomp
25 has repeatedly confirmed its production is not complete and is ongoing. The Court expressly
26 affirmed Sycomp’s “rolling production” approach at the September 14 CMC and rejected Trace3’s
27 request to impose a date certain for completion now that there was no PI motion looming. It is
28 unclear what more Trace3 expects Sycomp to do or the Court to order.
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
Trace3’s grasping attempt to backfill its motion by pointing to other unrelated alleged
“misuses” of the discovery process—without actually seeking any relief for those alleged abuses
see Proposed Order)—also fails and cannot rescue Trace3’s substantively deficient motion. The
motion should be denied in full.
II. FACTUAL BACKGROUND
A. Sycomp is diligently complying with the Court’s 8/7 and 8/15 discovery orders.
On May 23, 2023, the Court issued an order that, among other things, authorized expedited
discovery in advance of Trace3’s then-anticipated preliminary injunction motion, which it never
filed. See 5/23 TRO. On June 2, Trace3 served its first set of discovery requests to Sycomp,
10 including 52 RFPs, 19 SIs (one with 25 subparts), 43 RFAs, and multiple FIs including 17.1. RD
11 Decl. ¶ 2; Phillis Decl. Exs. 1-4. Sycomp responded on June 9 with only objections because Trace3
12 violated the gating requirements of Code of Civil Procedure section 2019.210 (“Section 2019.210”)
13 and related issues flowing therefrom. RD Decl. ¶ 2. On June 13, Trace3 served a second set of 4
14 RFPs and 8 SIs specifically targeting privileged, attorney work product information regarding
15 Sycomp’s investigation and forensic analysis in response to the 5/23 TRO. Id. ¶ 3; Phillis Decl.
16 Exs. 5-6. Sycomp timely responded on June 20 with objections based on Section 2019.210 as well
17 as privilege and work product. Id.
18 Trace3 filed a motion to compel, which the Court heard on July 28. On August 7, the Court
19 issued an order granting Trace3’s motion to compel, but only on the condition that Trace3 finally
20 serve a Code-compliant trade secret identification, which Trace3 had not yet done because of its
21 improper inclusion of broad, catch-all language. See 8/7 Order at 9-10. On August 15, after Sycomp
22 sought ex parte clarification of the 8/7 Order, the Court issued the 8/15 Order clarifying and
23 modifying the 8/7 Order in various respects. See 8/15 Order.
24 Sycomp served supplemental verified responses to Trace3’s 100+ requests on August 15 in
25 accordance with the 8/7 and 8/15 Orders and following Trace3’s service of an amended (yet still
26 deficient) trade secret disclosure. See RD Decl. ¶ 4; Phillis Decl. Exs. 1-6. On August 15 and 17,
27 Sycomp produced a “first cut” document production of 617 documents, totaling almost 3,000 pages,
28 consisting of all non-privileged documents located on ten former Trace3 employees’ Sycomp
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
devices or in their Sycomp email accounts that contained the term “Trace3.” RD Decl. ¶ 5.
B. Trace3 seeks reconsideration of the 8/15 Order and ignores Sycomp.
On August 17, Trace3 filed an Ex Parte Application for Reconsideration or Clarification of
the Court’s August 15, 2023 Order. See 8/17 Ex Parte App. Trace3 sought an order relating to
Sycomp’s statements that its discovery responses were made subject to the “limitations imposed
by the Court’s August 15, 2023 order,” arguing that Sycomp was improperly limiting its discovery
obligations and “stretching” the 8/15 Order because the 8/15 Order only limited RFPs 1-2 and SI
4. Id. at 11-12, 15. Sycomp’s opposition explained that the 8/15 Order contains numerous other
clarifications and limitations on the scope of discovery and that it was doing a diligent search for
10 responsive documents consistent with the Court’s discovery orders. See 8/21 Opp. at 8. The Court
11 denied Trace3’s ex parte application, including its request to further limit the 8/15 Order, and
12 confirmed that Sycomp was doing the diligent search required. See 8/22 Order.
13 On August 25, Trace3 took the deposition of Sycomp’s PMK. Trace3 asked no questions
14 about Sycomp’s August 15 supplemental responses, which the PMK witness had verified. RD Decl.
15 ¶ 7. Two days later, on Sunday, August 27, Trace3 sent Sycomp a letter purporting to identify, for
16 the first time, alleged deficiencies in some of Sycomp’s August 15 responses. Id. ¶ 8, Ex. 1. On
17 August 30, Sycomp provided a detailed response to Trace3’s letter and produced an additional
18 5,510 documents (totaling almost 15,000 pages). Id. ¶ 9, Ex. 2. Sycomp’s letter confirmed that the
19 August 30 production included the bulk of the documents responsive to a number of the requests
20 about which Trace3 had inquired. Id. The letter also confirmed that “[a]s we have stated repeatedly,
21 Sycomp is working diligently to review and produce non-privileged responsive documents as
22 quickly as is reasonably feasible, consistent with the Court’s Orders and the Code” and that “[g]iven
23 the volume of information sought, Sycomp’s review necessarily is ongoing.” Id. Among other
24 things, Sycomp’s letter also confirmed the validity of its privilege and work product objections to
25 SIs 1, 2, 4, 21, 22, 24-27 and RFAs 22-24. Id.
26
27 Sycomp’s initial document collection and review efforts prioritized data from the ten former
Trace3 employees who were identified in Trace3’s original Complaint as the “Sycomp
28 Employees,” including the four original Individual Defendants. Sycomp has since expanded its
DLA I PER LLP (US) collection and review efforts beyond those ten employees. RD Decl. ¶ 5.
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
Trace3 never responded to Sycomp’s August 30 letter. RD Decl. ¶ 9. Inexplicably, Trace3
did not include or even reference these letters in its Motion. See Phillis Decl., passim.
C. Trace3 fails to move for a preliminary injunction and lets the TRO lapse.
On August 31, Trace3 sought another ex parte extension of its deadline to move for
preliminary injunction, which the Court denied on September 1. See 9/1 Order. Trace3 then failed
to file the motion by the September 6 deadline, and the “follow the law” TRO lapsed on September
29. Regardless, Sycomp continued with its document production efforts. RD Decl. ¶ 10.
On September 12, Trace3 wrote to inquire about the “status of Sycomp’s production,”
asking whether Sycomp’s August 30 production was complete and final or “whether we should
10 anticipate further rolling production to satisfy the Court’s order granting Trace3’s motion compel.”
11 RD Decl. ¶ 11, Ex. 3. Sycomp confirmed the same day that “we are not done with our review and
12 production.” Id. When Trace3 asked when Sycomp expected to complete its production, Sycomp’s
13 counsel responded: “I don’t know. We collected, reviewed, and produced the most relevant material
14 already (over 6k docs) and now we are working on everything else and will continue with rolling
15 productions until we are done.” Id.
16 On September 14, the Court held an initial CMC. Trace3 again raised the timing and
17 completeness of Sycomp’s document production and asked the Court to impose a “date certain” by
18 which Sycomp must complete its document production. See CMC Stmt. With no PI motion filed,
19 however, the Court declined to order a date certain for production, affirming Sycomp’s “rolling
20 production” approach to Trace3’s broad requests. RD Decl. ¶ 12, Ex. 4 (9/14 Tr. at 29:11-18).
21 During this period, Sycomp worked to collect and analyze additional potentially responsive
22 data to the 56 RFPs Trace3 had served. That raw data collected contained roughly 2 million
23 documents. Sycomp used analytics and support tools to narrow the data set to a reasonably
24 manageable review population—still tens of thousands of documents. RD Decl. ¶ 13.
25 On September 18, Trace3 produced documents in its parallel Arizona litigation that
26 included a number of purchase orders (“POs”) between Trace3 and one of the key customers at
27 issue in this case. See 10/30 Mot. to Modify, passim. Those POs confirmed Sycomp’s position, as
28 set forth in the July 14, 2023 Declaration of Saurabh Saxena and elsewhere, that the customer owns
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
all project-related work product and deliverables, including “Build Documents”—meaning Trace3
cannot “own” those materials or claim them as its trade secrets, either alone or in a compilation.
Sycomp immediately sought to meet and confer with Trace3 regarding the proper scope of
discovery concerning “Build Documents” and temporarily paused its document review efforts so
these foundational issues could be resolved. See RD Decl. ¶ 14; 10/30 Motion to Modify.
After the October 6 IDC, Sycomp resumed its document collection and review efforts the
next business day. Id. ¶ 15. Sycomp produced an additional 3,665 documents on October 30 and
November 9 totaling almost 13,000 pages—bringing its total production to date to roughly 10,000
documents and over 30,000 pages. Id. ¶ 16. Concurrent with Sycomp’s ongoing discovery efforts
10 and rolling production, Sycomp moved the Court on October 30 for an order modifying the 8/7 and
11 8/15 Orders as to just five of Trace3’s discovery requests that explicitly seek discovery related to
12 “Build Documents.” That motion will be heard simultaneous with Trace3’s motion to compel.
13 Since the Court issued its 8/7 and 8/15 Orders, Trace3 has served an additional 33 RFPs, 20
14 SIs, 17 RFAs, and an additional FI 17.1 series. RD Decl. ¶ 17. All told, Trace3 has served five sets
15 of RFPs (87 in total), five sets of SIs (47 in total including one with 25 subparts), three sets of RFAs
16 (60 in total), and two sets of FIs (10 in total, including two 17.1 series). Id. Many of Trace3’s latest
17 requests seek discovery that is plainly duplicative of Trace3’s initial requests, cumulative of the
18 substantial discovery Sycomp has already provided and continues to provide (and is therefore
19 harassing), or is outside the bounds of proper discovery under the Code and this Court’s orders. Id.
20 As just one example, Trace3’s RFP 61 (Set Four) asks Sycomp to “Produce for forensic
21 examination any and all SYCOMP ELECTRONIC DEVICES used by the FORMER TRACE3
22 EMPLOYEES”—a transparent attempt to circumvent the Court’s prior orders denying that relief
23 when requested as part of Trace3’s two TRO applications, much like Trace3’s repeated failed
24 attempts to rewrite the Court’s Order providing for neutral forensic imaging (not examination or
25 searching) of the Individual Defendants’ personal devices. Id.
26 In duplicative requests to RFPs 1-2 and SI 4, Trace3’s third set of RFPs and SIs again asked
27 Sycomp to produce and identify any documents that match any of the hash values or file names for
28 any document identified in Trade Secret Category Nos. 1-4 in Trace3’s August 7 amended trade
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
secret disclosure. Id. ¶ 18. Sycomp’s October 27 responses confirm that: (1) as to Trade Secret
Category Nos. 2-4, Sycomp does not have and has never had any documents matching any of the
listed hash values; and (2) as to Trade Secret Category No. 1, the “Build Document” compilation
of 182,077 files, Sycomp had identified 85 unique matches, 80 of which are generic files that are
omnipresent in business computer systems, such as company logos in signature blocks and headers,
2-byte system files, etc. (none of which are owned or could be owned by Trace3, or could be a trade
secret), and five of which are files sent by a Sycomp business partner and lawfully received by
Sycomp on July 6, 2023, in the normal course of business—none of which contain any reference
to Trace3, and many of which are labeled proprietary to the third-party partner. Id. In other words,
10 Sycomp has confirmed in verified discovery responses that it does not have the Category 1 “Build
11 Document” compilation and does not have any document in Categories 2-4. Id.
12 D. Trace3 fails to meet and confer with Sycomp as ordered at the IDC.
13 During the October 6 IDC, the Court ordered Trace3 to meet and confer with Sycomp—
14 even if it would only last five minutes—to determine if there was some limited information Sycomp
15 could provide about its investigation without risk of waiving attorney-client privilege or attorney
16 work product. RD Decl. ¶ 19. Trace3 failed to do so, much like Trace3 never responded to
17 Sycomp’s August 30 letter. Id.
18 Nor did Trace3 ever meet and confer with Sycomp regarding the specific alleged
19 deficiencies in Sycomp’s document production, which Trace3 raised for the first time in its motion
20 to compel. Id. ¶ 20; see MTC at 12-13. Trace3 complains that certain documents appear to be
21 missing, but Sycomp’s production and review are ongoing. It is therefore expected and not
22 surprising that some documents have not yet been produced. Id.
23 III. ARGUMENT
24 A. Sycomp’s privilege and work product objections should be sustained.
25 The thrust of Trace3’s motion seeks an order overruling Sycomp’s attorney-client privilege
26 and work product objections to 9 SIs (Nos. 1, 2, 4, 21, 22, 24, 25, 26, and 27) and 3 RFAs (Nos.
27 22, 23, and 24) on the purported basis that Trace3 merely seeks “underlying facts,” not privileged
28
DLA I PER LLP (US)
ALO L TO
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
communications or work product. See MTC at 15-18. Trace3 is mistaken. The discovery requests
at issue seek detailed descriptions of what Sycomp has done since this dispute arose—i.e., after
Trace3 sent pre-litigation demand letters to Sycomp and ten former employees accusing them of
misappropriation and other wrongdoing—to investigate and evaluate Trace3’s claims, including
information specifically related to work performed at the direction of counsel by Sycomp
employees and consulting experts. This is core attorney work product reflecting counsel’s mental
impressions, conclusions, opinions, and theories regarding Trace3’s claims, Sycomp’s defenses,
and litigation strategy—precisely the type of information the work product doctrine aims to protect
so counsel can “prepare their cases thoroughly and [] investigate not only the favorable but the
10 unfavorable aspects of those cases.” Code Civ. Proc. § 2018.020.
11 For instance, SIs 1 and 2 demand that Sycomp “describe in detail” what it has done since
12 April 21, 2023—the day Trace3 sent its demand letters threatening litigation—to “search for and
13 ascertain” whether any of Trace3’s alleged trade secret or confidential documents or the content
14 thereof are within Sycomp’s possession, custody, or control. See Phillis Decl. Ex. 4. RFAs 22-24
15 attempt to get at this same information in reverse, seeking admissions that Sycomp “has not
16 searched” the former Trace3 employees’ devices to determine whether they attached external hard
17 drives or used their personal email accounts as well as the complete factual basis for any denial or
18 qualified admission through FI 17.1. Id. Ex. 2. These requests directly and indirectly implicate the
19 work product of Sycomp’s counsel in investigating and evaluating Trace3’s claims and Sycomp’s
20 defenses, as well as attorney-client communications reflecting those impressions, opinions, and
21 theories. If Sycomp were to “describe in detail” what it has done (or elected not to do) to search for
22 any alleged Trace3 information on its systems (something it voluntarily offered to do outside the
23 litigation and discovery process back in April), that would necessarily reveal counsel’s impressions
24
The Court’s 8/15 Order limited Sycomp’s obligations with respect to SI 4 to preclude any express
25 or implied requirement that Sycomp’s response encompass its review or analysis of the documents
listed in Trace3’s Category 1 “Build Document” compilation. See 8/15 Order ¶ 8.
26 Sycomp provided a complete substantive response to SI 4, confirming that it lacks sufficient
knowledge to identify any “personal property” belonging to the former Trace3 employees,
27 particularly based on a file and/or folder name alone. Consistent with the 8/15 Order, Sycomp
further explained that it could not respond in greater detail because Trace3 had designated the
28 relevant file listing as AEO and Sycomp could not disclose it to anyone other than Sycomp’s
DLA I PER LLP (US) General Counsel. Phillis Decl. Ex. 4.
ALO L TO
10
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
of the factual and legal issues involved, including the perceived strengths and weaknesses of the
claims and defenses and counsel’s selected strategies and processes for evaluating and responding
to the claims and discovery requests at issue.
SIs 21, 22, 24, 25, 26, and 27 are equally improper and directly seek work product material
as well as related attorney-client communications. Like SIs 1 and 2, these requests inquire into
Sycomp’s counsel’s processes for collecting and analyzing data in response to the Court’s TRO
order as well as the basis for the analysis and conclusions reflected in the June 12, 2023 Forensic
Search Statement submitted by counsel. See Ex. 6. SI 21, for example, asks Sycomp to “[e]xplain
the steps YOU took to prepare YOUR Forensic Search Statement,” including how Sycomp
10 analyzed the relevant data and who was involved. Id. In other words, SI 21 directly seeks discovery
11 about the processes and analysis undertaken by counsel or at counsel’s direction, which also
12 implicates communications between counsel, Sycomp, and its retained forensic expert related to
13 the Court-ordered search. SIs 22 and 24-27 likewise attempt to probe into how Sycomp’s counsel
14 conducted the Court-ordered forensic search and the decisions Sycomp’s counsel made in
15 coordination with its client representatives and its retained forensic expert, iDS. Trace3 was entitled
16 to and in fact received the “results of that search,” which confirmed that none of the nine supposed
17 “crown jewel” files–all marked AEO by Trace3–resided on any Sycomp device or system. Notably,
18 the Court did not order Sycomp to disclose to Trace3 or the Court its counsel’s methodology,
19 processes, and decision-making. See 5/23 TRO at 3:13-23. Trace3 cannot seek that work product
20 information through discovery.
21 There is no question that information concerning counsel’s processes and mental
22 impressions of the claims and issues in dispute are absolutely protected as work product under
23 California law. See Code Civ. Proc. § 2018.030(a) (information that reveals the “impressions,
24 conclusions, opinions, or legal research and or theories” of counsel is “not discoverable under any
25 circumstances”). “At its core, the work product doctrine shelters the mental processes of the
26 attorney, providing a privileged area within which he can analyze and prepare his client’s case.”
27 United States v. Nobles, 422 U.S. 225, 238-39 (1975). The work product doctrine shields an
28 attorney’s decisions and processes—e.g., which witnesses to interview, which documents to
DLA I PER LLP (US)
ALO L TO
11
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
analyze, which questions to ask—from compelled disclosure because those decisions “may disclose
important tactical or evaluative information” and may “provide a window into the attorney’s theory
of case or the attorney’s evaluation of what issues are most important.” Coito v. Super. Ct., 54
Cal.4th 480, 495 (2012). This includes the work of a consulting expert directed by counsel, up to
and including the time the expert may testify on those issues in the case. See County of Los Angeles
v. Super. Ct., 222 Cal.App.3d 647, 654 (1990) (“It has long been recognized that the work of an
expert-consultant is protected by the attorney’s work product privilege.”).
Trace3’s requests seek precisely this type of absolutely protected information and are
therefore improper. Trace3 argues that it seeks only the “ultimate facts” as to “whether Sycomp
10 ever made any attempt to search for Trace3’s documents” and “if so, what it did with those
11 documents.” MTC at 17. But (1) that is not what these requests seek, and (2) Sycomp has already
12 provided that information in response to other, properly framed requests. As shown above, the
13 requests explicitly ask for detailed descriptions of the processes Sycomp has undertaken to
14 investigate Trace3’s claims and develop evidence and comply with the Court’s TRO Order, and the
15 analyses performed by or at the direction of Sycomp’s counsel. Sycomp made the required initial
16 showing that these requests require it to divulge protected work product, and Trace3 has failed to
17 meet its burden of showing that the claimed privilege does not apply or that some exception exists.
18 Wellpoint Health Networks, Inc. v. Super. Ct., 59 Cal. App. 4th 110, 123-24 (1997).
19 Moreover, Sycomp has answered other discovery requests that target the “ultimate facts” of
20 whether Sycomp has searched for any Trace3 information and, if so, the results of those searches
21 without improperly impinging on work product. Sycomp’s October 27 responses to Trace3’s third
22 set of RFPs and SIs and second set of RFAs—which were served before Trace3 filed this motion—
23 confirm both that (1) Sycomp has conducted a reasonably diligent search of the data in its
24 possession, custody, or control, and (2) those searches confirm that Sycomp does not have the
25 Category 1 “Build Document” Compilation or any alleged trade secret document listed in
26 Categories 2, 3, or 4. RD Decl. ¶ 18. Sycomp also provided unqualified admissions to direct
27 questions asking whether it had “checked” the Individual Defendants’ Sycomp devices for certain
28 activity, because those admissions—unlike the RFAs at issue on this motion—did not implicate or
DLA I PER LLP (US)
ALO L TO
12
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
require Sycomp to divulge any protected work product. Id.
Sycomp’s straightforward responses to these other discovery requests belie Trace3’s claims
that it has a “compelling need” to delve into the processes and decision-making employed by
Sycomp’s counsel. To be sure, Trace3 has not been deprived of “material facts bearing on Sycomp’s
accepting the fruits of the misappropriation and sticking their heads in the sand.” MTC at 18. The
facts just show otherwise: Sycomp does not have any alleged Trace3 trade secret. That Sycomp’s
search proves what Sycomp has told Trace3 since April 24 (and does not support Trace3’s
concocted theory of the case) does not mean Trace3 is being improperly deprived of any discovery
to which it is entitled, nor justify Trace3’s attempt to intrude upon Sycomp’s work product.
10 Even if the work product information sought by these requests were not absolutely protected
11 from disclosure (which it is), these requests plainly seek “discovery on discovery” which is heavily
12 disfavored. See Uschold v. Carriage Servs., Inc., 2019 WL 8298261, at *4 (N.D. Cal. Jan. 22, 2019)
13 (“‘[D]iscovery on discovery’ is disfavored and, to be both relevant and proportional to the needs of
14 the case, a party seeking it ‘must show a specific deficiency in the other party’s production.’”); see
15 also Jensen v. BMW of N. Am., LLC, 328 F.R.D. 557, 566 (S.D. Cal. 2019) (same); Liberty Mut.
16 Ins. Co. v. Super. Ct., 10 Cal. App. 4th 1282, 1288 (1992) (federal discovery decisions are
17 historically persuasive absent contrary decisions). Generally speaking, “[p]laintiffs do not have a
18 right to conduct discovery into [a defendant’s] discovery methods.” Scherer v. FCA US, LLC, 2021
19 WL 5494463, at *3 (C.D. Cal. Nov. 23, 2021) (rejecting plaintiffs’ attempts to compel defendant
20 to identify its search and review parameters). Trace3 has provided no factual or legal justification
21 to do so here. Trace3 knows the ultimate facts: Sycomp has searched its relevant systems and
22 devices and has found no evidence that Sycomp possesses any alleged Trace3 trade secret
23 information. Anything more falls outside qualified “fact work product” and cannot be compelled.
24 Finally, Trace3’s cited cases are not to the contrary and do not provide any legal basis to
25 overrule Sycomp’s privilege and work product objections. See, e.g. In re Enforcement of Subpoena
26 Issued by FDIC, 2011 WL 2559546, at *1-2 (N.D. Cal. June 28, 2011) (written transcripts were not
27 protected work product absent showing that “the transcription process involves any creative or
28 analytic input from counsel,” and defendant showed substantial need); Jackson v. Cty. of
DLA I PER LLP (US)
ALO L TO
13
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
Sacramento, 175 F.R.D. 653, 654 (E.D. Cal. 1997) (qualified federal official information privilege
did not preclude disclosure of investigatory law enforcement files); Romero v. Allstate Ins. Co.,
271 F.R.D. 96, 109-10 (E.D. Pa. 2010) (compelling parties to meet and confer regarding proposed
search terms and custodians but declining to order defendant to disclose in detail past search
methodologies). To be certain, Sycomp has shared with Trace3 and this Court its search terms and
the custodians whose Sycomp records have been collected and searched in-line with FormFactor,
Inc. v. Micro-Probe, Inc., 2012 WL 1575093 (N.D. Cal. May 3, 2012).
In sum, Sycomp’s privilege and work product objections should be sustained.
B. Sycomp’s responses to RFPs 1-52 are complete and proper.
10 1. Sycomp’s reference to the 8/15 Order is not an improper objection.
11 Trace3 argues Sycomp improperly “objected” to RFPs 1-52 and limited its production
12 because it clarified that its responses and production are subject to the limitations set forth in the
13 Court’s 8/15 Order. See MTC at 18-19. But there is nothing improper about Sycomp’s responses,
14 and there is nothing to compel. Tellingly, Trace3 provides no evidence that Sycomp has improperly
15 withheld any responsive documents on this basis and does not specify what, exactly, it seeks to
16 compel. Rather, Trace3 argues vaguely that this clarifying statement prevented it from “ascertaining
17 what, if anything, Sycomp was producing, on what terms, and what it was withholding based on
18 burden, if anything.” MTC at 19. But Sycomp already told Trace3 in its August 30 meet and confer
19 letter (which, again, Trace3 inexplicably failed to include or even reference in its motion) that
20 Sycomp was “not aware of any documents being withheld on this basis,” and that Sycomp would
21 amend its responses if that changed. See RD Decl. ¶ 9, Ex. 2. It has not. This is a non-issue.
22 This is another attempt by Trace3 to resurrect settled issues the Court has already resolved.
23 Trace3 made this argument in its 8/17 ex parte application—which the Court denied in full. 8/22
24 Order; 8/17 Ex Parte App. at 11-12, 15 (arguing Sycomp was “stretching the Order” to limit its
25 discovery obligations). Trace3’s attempts to reopen this Court’s prior orders ad nauseum are
26 improper and at this point sanctionable. In any event, as Sycomp explained then, the 8/15 Order
27 contains many important clarifications and limitations regarding the scope of discovery apart from
28 the Court’s express limitations as to RFPs 1, 2, and 4 in paragraph 8. 8/21 Ex Parte Opp. at 8. These
DLA I PER LLP (US)
ALO L TO
14
SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833
include the Court’s clarification that nearly all of Trace3’s requests are limited either explicitly or
implicitly in time, that “Sycomp merely needs to answer these discovery requests to the best of its
ability (and after doing an adequate investigation, as required by law),” that Sycomp need not
violate the SPO in responding to Trace3’s requests, and that the scope of trade secret-related
discovery is “now bounded by Trace3’s newly-amended trade secret disclosure, rather than the
‘TS/CI List and Kopelev Exhibits.’” 8/15 Order, passim. Sycomp’s confirmation that its discovery
responses and production would be made subject to the Court’s discovery orders should not be
controversial. The Court agreed, denying Trace3’s ex parte request for an order “clarifying that the
stated limitation only affects those three requests” because it found that Sycomp “is doing [a
10 diligent] search” for responsive documents as required. 8/22 Order at 2. The Court’s prior order
11 should stand, and Trace3 should be sanctioned for its de facto request for reconsideration.
12 2. Lack of control over another’s information is a proper resp
Preview
RAJIV DHARNIDHARKA (Cal. Bar No. 234756) rajiv.dharnidharka@dlapiper.com JEANETTE BARZELAY (Cal. Bar No. 261780) jeanette.barzelay@us.dlapiper.com MICAH A. CHAVIN (Cal. Bar No. 313634) micah.chavin@dlapiper.com DLA PIPER LLP (US) 3203 Hanover Street, Suite 100 Palo Alto, CA 94304-1123 Tel: 650.833.2000 Fax: 650.833.2001 Attorneys for Defendant Sycomp A Technology Company Inc. SUPERIOR COURT OF THE STATE OF CALIFORNIA COUNTY OF SANTA CLARA TRACE3, LLC, a California limited liability CASE NO. 23CV415833 company, DEFENDANT SYCOMP A TECHNOLOGY COMPANY INC.’S Plaintiff, OPPOSITION TO TRACE3’S MOTION TO COMPEL COMPLIANCE WITH COURT ORDER AND FURTHER RESPONSES TO SPECIAL SYCOMP A TECHNOLOGY COMPANY, INTERROGATORIES NOS. 1, 2, 4, 21, 22, INC., a California corporation; TIMOTHY 24, 25, 26, 27; REQUESTS FOR CORDELL, an individual; GEOFF PETERSON, ADMISSIONS NOS. 22, 23, 24; an individual; DEVIN TOMCIK, an individual; REQUESTS FOR PRODUCTION 1-56; JOHN BARNES, an individual, and DOES 1- AND FOR SANCTIONS inclusive; Date: December 15, 2023 Time: 9:00 a.m. Defendants. Dept: 1 Action Filed: May 12, 2023 DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 TABLE OF CONTENTS Page I. INTRODUCTION ............................................................................................................. 4 II. FACTUAL BACKGROUND ............................................................................................ 5 A. Sycomp is diligently complying with the Court’s 8/7 and 8/15 discovery orders. 5 B. Trace3 seeks reconsideration of the 8/15 Order and ignores Sycomp. .................. 6 C. Trace3 fails to move for a preliminary injunction and lets the TRO lapse. ........... 7 D. Trace3 fails to meet and confer with Sycomp as ordered at the IDC. ................... 9 III. ARGUMENT ..................................................................................................................... 9 10 A. Sycomp’s privilege and work product objections should be sustained.................. 9 11 B. Sycomp’s responses to RFPs 1-52 are complete and proper. .............................. 14 12 13 1. Sycomp’s reference to the 8/15 Order is not an improper objection. ...... 14 14 2. Lack of control over another’s information is a proper response. ........... 15 15 3. Sycomp should not be compelled to respond further to SI 6. .................. 15 C. Trace3 fails to show that Sycomp’s rolling production is deficient..................... 16 16 D. Sycomp has not “misused” the discovery process. .............................................. 17 17 IV. CONCLUSION ................................................................................................................ 18 18 19 20 21 22 23 24 25 26 27 28 DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 TABLE OF AUTHORITIES Page(s) ASES Coito v. Super. Ct., 54 Cal.4th 480 (2012) ...............................................................................................................12 County of Los Angeles v. Super. Ct., 222 Cal.App.3d 647 (1990).......................................................................................................12 In re Enforcement of Subpoena Issued by FDIC, 2011 WL 2559546 (N.D. Cal. June 28, 2011) ..........................................................................13 FormFactor, Inc. v. Micro-Probe, Inc., 2012 WL 1575093 (N.D. Cal. May 3, 2012) ............................................................................14 Jackson v. Cty. of Sacramento, 10 175 F.R.D. 653 (E.D. Cal. 1997) ........................................................................................13, 14 11 Jensen v. BMW of N. Am., LLC, 12 328 F.R.D. 557 (S.D. Cal. 2019)...............................................................................................13 13 Liberty Mut. Ins. Co. v. Super. Ct., 10 Cal. App. 4th 1282 (1992)....................................................................................................13 14 Romero v. Allstate Ins. Co., 15 271 F.R.D. 96 (E.D. Pa. 2010) ..................................................................................................14 16 Scherer v. FCA US, LLC, 2021 WL 5494463 (C.D. Cal. Nov. 23, 2021) ..........................................................................13 17 18 United States v. Nobles, 422 U.S. 225 (1975) ..................................................................................................................11 19 Unzipped Apparel, LLC v. Bader, 20 156 Cal. App. 4th 123 (2007)....................................................................................................17 21 Uschold v. Carriage Servs., Inc., 2019 WL 8298261 (N.D. Cal. Jan. 22, 2019) ...........................................................................13 22 23 Wellpoint Health Networks, Inc. v. Super. Ct., 59 Cal. App. 4th 110 (1997)......................................................................................................12 24 TATUTES 25 Code Civ. Proc. § 2018.020 ............................................................................................................10 26 Code Civ. Proc. § 2018.030(a) ........................................................................................................11 27 Code of Civil Procedure section 2019.210 .......................................................................................5 28 DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 I. INTRODUCTION Trace3’s motion to compel is a hodgepodge of grievances and failed legal arguments that aim to show that Sycomp is shirking its discovery obligations and withholding information from Trace3. But Trace3’s motion does not match reality. Sycomp has substantively responded to over 150 requests served by Trace3, has produced roughly 10,000 documents (totaling over 30,000 pages), and is continuing to review and produce documents on a rolling basis—as it has told Trace3 repeatedly since August. In particular, Sycomp’s latest discovery responses served on October 27 confirm the salient facts that (i) Sycomp has conducted a diligent search of its systems and devices for Trace3’s alleged trade secret information, and (ii) Sycomp does not have the Category 1 “Build 10 Document” Compilation or any of the documents identified in trade secret Categories 2, 3, or 4. In 11 other words, Sycomp’s verified responses confirm that none of Trace3’s alleged trade secrets were 12 brought to Sycomp by any former Trace3 employee. 13 These facts should be a game-changer and Trace3 should have dismissed its suit—but 14 Trace3’s motion ignores these facts entirely. Instead, Trace3 argues once again that it is being 15 deprived of necessary discovery simply because the discovery it has received does not support its 16 claims (and in fact proves them false), because Sycomp’s rolling production is not yet complete, 17 and because Sycomp has asserted proper objections to Trace3’s “discovery on discovery” requests 18 inquiring into its counsel’s processes, decision-making, and analyses. Trace3’s arguments fail. 19 First, the Court cannot compel Sycomp to disclose its counsel’s mental impressions and 20 processes related to its investigation efforts, and Trace3 provides no legal or factual basis to 21 overrule Sycomp’s privilege and work product objections. 22 As to the RFPs and Sycomp’s document production, there is nothing to compel. Sycomp 23 told Trace3 that it was not withholding responsive documents based on the Court’s August 15 Order 24 and the limitations therein (except as to the express limitations to RFPs 1-2 and SI 4), and Sycomp 25 has repeatedly confirmed its production is not complete and is ongoing. The Court expressly 26 affirmed Sycomp’s “rolling production” approach at the September 14 CMC and rejected Trace3’s 27 request to impose a date certain for completion now that there was no PI motion looming. It is 28 unclear what more Trace3 expects Sycomp to do or the Court to order. DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 Trace3’s grasping attempt to backfill its motion by pointing to other unrelated alleged “misuses” of the discovery process—without actually seeking any relief for those alleged abuses see Proposed Order)—also fails and cannot rescue Trace3’s substantively deficient motion. The motion should be denied in full. II. FACTUAL BACKGROUND A. Sycomp is diligently complying with the Court’s 8/7 and 8/15 discovery orders. On May 23, 2023, the Court issued an order that, among other things, authorized expedited discovery in advance of Trace3’s then-anticipated preliminary injunction motion, which it never filed. See 5/23 TRO. On June 2, Trace3 served its first set of discovery requests to Sycomp, 10 including 52 RFPs, 19 SIs (one with 25 subparts), 43 RFAs, and multiple FIs including 17.1. RD 11 Decl. ¶ 2; Phillis Decl. Exs. 1-4. Sycomp responded on June 9 with only objections because Trace3 12 violated the gating requirements of Code of Civil Procedure section 2019.210 (“Section 2019.210”) 13 and related issues flowing therefrom. RD Decl. ¶ 2. On June 13, Trace3 served a second set of 4 14 RFPs and 8 SIs specifically targeting privileged, attorney work product information regarding 15 Sycomp’s investigation and forensic analysis in response to the 5/23 TRO. Id. ¶ 3; Phillis Decl. 16 Exs. 5-6. Sycomp timely responded on June 20 with objections based on Section 2019.210 as well 17 as privilege and work product. Id. 18 Trace3 filed a motion to compel, which the Court heard on July 28. On August 7, the Court 19 issued an order granting Trace3’s motion to compel, but only on the condition that Trace3 finally 20 serve a Code-compliant trade secret identification, which Trace3 had not yet done because of its 21 improper inclusion of broad, catch-all language. See 8/7 Order at 9-10. On August 15, after Sycomp 22 sought ex parte clarification of the 8/7 Order, the Court issued the 8/15 Order clarifying and 23 modifying the 8/7 Order in various respects. See 8/15 Order. 24 Sycomp served supplemental verified responses to Trace3’s 100+ requests on August 15 in 25 accordance with the 8/7 and 8/15 Orders and following Trace3’s service of an amended (yet still 26 deficient) trade secret disclosure. See RD Decl. ¶ 4; Phillis Decl. Exs. 1-6. On August 15 and 17, 27 Sycomp produced a “first cut” document production of 617 documents, totaling almost 3,000 pages, 28 consisting of all non-privileged documents located on ten former Trace3 employees’ Sycomp DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 devices or in their Sycomp email accounts that contained the term “Trace3.” RD Decl. ¶ 5. B. Trace3 seeks reconsideration of the 8/15 Order and ignores Sycomp. On August 17, Trace3 filed an Ex Parte Application for Reconsideration or Clarification of the Court’s August 15, 2023 Order. See 8/17 Ex Parte App. Trace3 sought an order relating to Sycomp’s statements that its discovery responses were made subject to the “limitations imposed by the Court’s August 15, 2023 order,” arguing that Sycomp was improperly limiting its discovery obligations and “stretching” the 8/15 Order because the 8/15 Order only limited RFPs 1-2 and SI 4. Id. at 11-12, 15. Sycomp’s opposition explained that the 8/15 Order contains numerous other clarifications and limitations on the scope of discovery and that it was doing a diligent search for 10 responsive documents consistent with the Court’s discovery orders. See 8/21 Opp. at 8. The Court 11 denied Trace3’s ex parte application, including its request to further limit the 8/15 Order, and 12 confirmed that Sycomp was doing the diligent search required. See 8/22 Order. 13 On August 25, Trace3 took the deposition of Sycomp’s PMK. Trace3 asked no questions 14 about Sycomp’s August 15 supplemental responses, which the PMK witness had verified. RD Decl. 15 ¶ 7. Two days later, on Sunday, August 27, Trace3 sent Sycomp a letter purporting to identify, for 16 the first time, alleged deficiencies in some of Sycomp’s August 15 responses. Id. ¶ 8, Ex. 1. On 17 August 30, Sycomp provided a detailed response to Trace3’s letter and produced an additional 18 5,510 documents (totaling almost 15,000 pages). Id. ¶ 9, Ex. 2. Sycomp’s letter confirmed that the 19 August 30 production included the bulk of the documents responsive to a number of the requests 20 about which Trace3 had inquired. Id. The letter also confirmed that “[a]s we have stated repeatedly, 21 Sycomp is working diligently to review and produce non-privileged responsive documents as 22 quickly as is reasonably feasible, consistent with the Court’s Orders and the Code” and that “[g]iven 23 the volume of information sought, Sycomp’s review necessarily is ongoing.” Id. Among other 24 things, Sycomp’s letter also confirmed the validity of its privilege and work product objections to 25 SIs 1, 2, 4, 21, 22, 24-27 and RFAs 22-24. Id. 26 27 Sycomp’s initial document collection and review efforts prioritized data from the ten former Trace3 employees who were identified in Trace3’s original Complaint as the “Sycomp 28 Employees,” including the four original Individual Defendants. Sycomp has since expanded its DLA I PER LLP (US) collection and review efforts beyond those ten employees. RD Decl. ¶ 5. ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 Trace3 never responded to Sycomp’s August 30 letter. RD Decl. ¶ 9. Inexplicably, Trace3 did not include or even reference these letters in its Motion. See Phillis Decl., passim. C. Trace3 fails to move for a preliminary injunction and lets the TRO lapse. On August 31, Trace3 sought another ex parte extension of its deadline to move for preliminary injunction, which the Court denied on September 1. See 9/1 Order. Trace3 then failed to file the motion by the September 6 deadline, and the “follow the law” TRO lapsed on September 29. Regardless, Sycomp continued with its document production efforts. RD Decl. ¶ 10. On September 12, Trace3 wrote to inquire about the “status of Sycomp’s production,” asking whether Sycomp’s August 30 production was complete and final or “whether we should 10 anticipate further rolling production to satisfy the Court’s order granting Trace3’s motion compel.” 11 RD Decl. ¶ 11, Ex. 3. Sycomp confirmed the same day that “we are not done with our review and 12 production.” Id. When Trace3 asked when Sycomp expected to complete its production, Sycomp’s 13 counsel responded: “I don’t know. We collected, reviewed, and produced the most relevant material 14 already (over 6k docs) and now we are working on everything else and will continue with rolling 15 productions until we are done.” Id. 16 On September 14, the Court held an initial CMC. Trace3 again raised the timing and 17 completeness of Sycomp’s document production and asked the Court to impose a “date certain” by 18 which Sycomp must complete its document production. See CMC Stmt. With no PI motion filed, 19 however, the Court declined to order a date certain for production, affirming Sycomp’s “rolling 20 production” approach to Trace3’s broad requests. RD Decl. ¶ 12, Ex. 4 (9/14 Tr. at 29:11-18). 21 During this period, Sycomp worked to collect and analyze additional potentially responsive 22 data to the 56 RFPs Trace3 had served. That raw data collected contained roughly 2 million 23 documents. Sycomp used analytics and support tools to narrow the data set to a reasonably 24 manageable review population—still tens of thousands of documents. RD Decl. ¶ 13. 25 On September 18, Trace3 produced documents in its parallel Arizona litigation that 26 included a number of purchase orders (“POs”) between Trace3 and one of the key customers at 27 issue in this case. See 10/30 Mot. to Modify, passim. Those POs confirmed Sycomp’s position, as 28 set forth in the July 14, 2023 Declaration of Saurabh Saxena and elsewhere, that the customer owns DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 all project-related work product and deliverables, including “Build Documents”—meaning Trace3 cannot “own” those materials or claim them as its trade secrets, either alone or in a compilation. Sycomp immediately sought to meet and confer with Trace3 regarding the proper scope of discovery concerning “Build Documents” and temporarily paused its document review efforts so these foundational issues could be resolved. See RD Decl. ¶ 14; 10/30 Motion to Modify. After the October 6 IDC, Sycomp resumed its document collection and review efforts the next business day. Id. ¶ 15. Sycomp produced an additional 3,665 documents on October 30 and November 9 totaling almost 13,000 pages—bringing its total production to date to roughly 10,000 documents and over 30,000 pages. Id. ¶ 16. Concurrent with Sycomp’s ongoing discovery efforts 10 and rolling production, Sycomp moved the Court on October 30 for an order modifying the 8/7 and 11 8/15 Orders as to just five of Trace3’s discovery requests that explicitly seek discovery related to 12 “Build Documents.” That motion will be heard simultaneous with Trace3’s motion to compel. 13 Since the Court issued its 8/7 and 8/15 Orders, Trace3 has served an additional 33 RFPs, 20 14 SIs, 17 RFAs, and an additional FI 17.1 series. RD Decl. ¶ 17. All told, Trace3 has served five sets 15 of RFPs (87 in total), five sets of SIs (47 in total including one with 25 subparts), three sets of RFAs 16 (60 in total), and two sets of FIs (10 in total, including two 17.1 series). Id. Many of Trace3’s latest 17 requests seek discovery that is plainly duplicative of Trace3’s initial requests, cumulative of the 18 substantial discovery Sycomp has already provided and continues to provide (and is therefore 19 harassing), or is outside the bounds of proper discovery under the Code and this Court’s orders. Id. 20 As just one example, Trace3’s RFP 61 (Set Four) asks Sycomp to “Produce for forensic 21 examination any and all SYCOMP ELECTRONIC DEVICES used by the FORMER TRACE3 22 EMPLOYEES”—a transparent attempt to circumvent the Court’s prior orders denying that relief 23 when requested as part of Trace3’s two TRO applications, much like Trace3’s repeated failed 24 attempts to rewrite the Court’s Order providing for neutral forensic imaging (not examination or 25 searching) of the Individual Defendants’ personal devices. Id. 26 In duplicative requests to RFPs 1-2 and SI 4, Trace3’s third set of RFPs and SIs again asked 27 Sycomp to produce and identify any documents that match any of the hash values or file names for 28 any document identified in Trade Secret Category Nos. 1-4 in Trace3’s August 7 amended trade DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 secret disclosure. Id. ¶ 18. Sycomp’s October 27 responses confirm that: (1) as to Trade Secret Category Nos. 2-4, Sycomp does not have and has never had any documents matching any of the listed hash values; and (2) as to Trade Secret Category No. 1, the “Build Document” compilation of 182,077 files, Sycomp had identified 85 unique matches, 80 of which are generic files that are omnipresent in business computer systems, such as company logos in signature blocks and headers, 2-byte system files, etc. (none of which are owned or could be owned by Trace3, or could be a trade secret), and five of which are files sent by a Sycomp business partner and lawfully received by Sycomp on July 6, 2023, in the normal course of business—none of which contain any reference to Trace3, and many of which are labeled proprietary to the third-party partner. Id. In other words, 10 Sycomp has confirmed in verified discovery responses that it does not have the Category 1 “Build 11 Document” compilation and does not have any document in Categories 2-4. Id. 12 D. Trace3 fails to meet and confer with Sycomp as ordered at the IDC. 13 During the October 6 IDC, the Court ordered Trace3 to meet and confer with Sycomp— 14 even if it would only last five minutes—to determine if there was some limited information Sycomp 15 could provide about its investigation without risk of waiving attorney-client privilege or attorney 16 work product. RD Decl. ¶ 19. Trace3 failed to do so, much like Trace3 never responded to 17 Sycomp’s August 30 letter. Id. 18 Nor did Trace3 ever meet and confer with Sycomp regarding the specific alleged 19 deficiencies in Sycomp’s document production, which Trace3 raised for the first time in its motion 20 to compel. Id. ¶ 20; see MTC at 12-13. Trace3 complains that certain documents appear to be 21 missing, but Sycomp’s production and review are ongoing. It is therefore expected and not 22 surprising that some documents have not yet been produced. Id. 23 III. ARGUMENT 24 A. Sycomp’s privilege and work product objections should be sustained. 25 The thrust of Trace3’s motion seeks an order overruling Sycomp’s attorney-client privilege 26 and work product objections to 9 SIs (Nos. 1, 2, 4, 21, 22, 24, 25, 26, and 27) and 3 RFAs (Nos. 27 22, 23, and 24) on the purported basis that Trace3 merely seeks “underlying facts,” not privileged 28 DLA I PER LLP (US) ALO L TO SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 communications or work product. See MTC at 15-18. Trace3 is mistaken. The discovery requests at issue seek detailed descriptions of what Sycomp has done since this dispute arose—i.e., after Trace3 sent pre-litigation demand letters to Sycomp and ten former employees accusing them of misappropriation and other wrongdoing—to investigate and evaluate Trace3’s claims, including information specifically related to work performed at the direction of counsel by Sycomp employees and consulting experts. This is core attorney work product reflecting counsel’s mental impressions, conclusions, opinions, and theories regarding Trace3’s claims, Sycomp’s defenses, and litigation strategy—precisely the type of information the work product doctrine aims to protect so counsel can “prepare their cases thoroughly and [] investigate not only the favorable but the 10 unfavorable aspects of those cases.” Code Civ. Proc. § 2018.020. 11 For instance, SIs 1 and 2 demand that Sycomp “describe in detail” what it has done since 12 April 21, 2023—the day Trace3 sent its demand letters threatening litigation—to “search for and 13 ascertain” whether any of Trace3’s alleged trade secret or confidential documents or the content 14 thereof are within Sycomp’s possession, custody, or control. See Phillis Decl. Ex. 4. RFAs 22-24 15 attempt to get at this same information in reverse, seeking admissions that Sycomp “has not 16 searched” the former Trace3 employees’ devices to determine whether they attached external hard 17 drives or used their personal email accounts as well as the complete factual basis for any denial or 18 qualified admission through FI 17.1. Id. Ex. 2. These requests directly and indirectly implicate the 19 work product of Sycomp’s counsel in investigating and evaluating Trace3’s claims and Sycomp’s 20 defenses, as well as attorney-client communications reflecting those impressions, opinions, and 21 theories. If Sycomp were to “describe in detail” what it has done (or elected not to do) to search for 22 any alleged Trace3 information on its systems (something it voluntarily offered to do outside the 23 litigation and discovery process back in April), that would necessarily reveal counsel’s impressions 24 The Court’s 8/15 Order limited Sycomp’s obligations with respect to SI 4 to preclude any express 25 or implied requirement that Sycomp’s response encompass its review or analysis of the documents listed in Trace3’s Category 1 “Build Document” compilation. See 8/15 Order ¶ 8. 26 Sycomp provided a complete substantive response to SI 4, confirming that it lacks sufficient knowledge to identify any “personal property” belonging to the former Trace3 employees, 27 particularly based on a file and/or folder name alone. Consistent with the 8/15 Order, Sycomp further explained that it could not respond in greater detail because Trace3 had designated the 28 relevant file listing as AEO and Sycomp could not disclose it to anyone other than Sycomp’s DLA I PER LLP (US) General Counsel. Phillis Decl. Ex. 4. ALO L TO 10 SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 of the factual and legal issues involved, including the perceived strengths and weaknesses of the claims and defenses and counsel’s selected strategies and processes for evaluating and responding to the claims and discovery requests at issue. SIs 21, 22, 24, 25, 26, and 27 are equally improper and directly seek work product material as well as related attorney-client communications. Like SIs 1 and 2, these requests inquire into Sycomp’s counsel’s processes for collecting and analyzing data in response to the Court’s TRO order as well as the basis for the analysis and conclusions reflected in the June 12, 2023 Forensic Search Statement submitted by counsel. See Ex. 6. SI 21, for example, asks Sycomp to “[e]xplain the steps YOU took to prepare YOUR Forensic Search Statement,” including how Sycomp 10 analyzed the relevant data and who was involved. Id. In other words, SI 21 directly seeks discovery 11 about the processes and analysis undertaken by counsel or at counsel’s direction, which also 12 implicates communications between counsel, Sycomp, and its retained forensic expert related to 13 the Court-ordered search. SIs 22 and 24-27 likewise attempt to probe into how Sycomp’s counsel 14 conducted the Court-ordered forensic search and the decisions Sycomp’s counsel made in 15 coordination with its client representatives and its retained forensic expert, iDS. Trace3 was entitled 16 to and in fact received the “results of that search,” which confirmed that none of the nine supposed 17 “crown jewel” files–all marked AEO by Trace3–resided on any Sycomp device or system. Notably, 18 the Court did not order Sycomp to disclose to Trace3 or the Court its counsel’s methodology, 19 processes, and decision-making. See 5/23 TRO at 3:13-23. Trace3 cannot seek that work product 20 information through discovery. 21 There is no question that information concerning counsel’s processes and mental 22 impressions of the claims and issues in dispute are absolutely protected as work product under 23 California law. See Code Civ. Proc. § 2018.030(a) (information that reveals the “impressions, 24 conclusions, opinions, or legal research and or theories” of counsel is “not discoverable under any 25 circumstances”). “At its core, the work product doctrine shelters the mental processes of the 26 attorney, providing a privileged area within which he can analyze and prepare his client’s case.” 27 United States v. Nobles, 422 U.S. 225, 238-39 (1975). The work product doctrine shields an 28 attorney’s decisions and processes—e.g., which witnesses to interview, which documents to DLA I PER LLP (US) ALO L TO 11 SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 analyze, which questions to ask—from compelled disclosure because those decisions “may disclose important tactical or evaluative information” and may “provide a window into the attorney’s theory of case or the attorney’s evaluation of what issues are most important.” Coito v. Super. Ct., 54 Cal.4th 480, 495 (2012). This includes the work of a consulting expert directed by counsel, up to and including the time the expert may testify on those issues in the case. See County of Los Angeles v. Super. Ct., 222 Cal.App.3d 647, 654 (1990) (“It has long been recognized that the work of an expert-consultant is protected by the attorney’s work product privilege.”). Trace3’s requests seek precisely this type of absolutely protected information and are therefore improper. Trace3 argues that it seeks only the “ultimate facts” as to “whether Sycomp 10 ever made any attempt to search for Trace3’s documents” and “if so, what it did with those 11 documents.” MTC at 17. But (1) that is not what these requests seek, and (2) Sycomp has already 12 provided that information in response to other, properly framed requests. As shown above, the 13 requests explicitly ask for detailed descriptions of the processes Sycomp has undertaken to 14 investigate Trace3’s claims and develop evidence and comply with the Court’s TRO Order, and the 15 analyses performed by or at the direction of Sycomp’s counsel. Sycomp made the required initial 16 showing that these requests require it to divulge protected work product, and Trace3 has failed to 17 meet its burden of showing that the claimed privilege does not apply or that some exception exists. 18 Wellpoint Health Networks, Inc. v. Super. Ct., 59 Cal. App. 4th 110, 123-24 (1997). 19 Moreover, Sycomp has answered other discovery requests that target the “ultimate facts” of 20 whether Sycomp has searched for any Trace3 information and, if so, the results of those searches 21 without improperly impinging on work product. Sycomp’s October 27 responses to Trace3’s third 22 set of RFPs and SIs and second set of RFAs—which were served before Trace3 filed this motion— 23 confirm both that (1) Sycomp has conducted a reasonably diligent search of the data in its 24 possession, custody, or control, and (2) those searches confirm that Sycomp does not have the 25 Category 1 “Build Document” Compilation or any alleged trade secret document listed in 26 Categories 2, 3, or 4. RD Decl. ¶ 18. Sycomp also provided unqualified admissions to direct 27 questions asking whether it had “checked” the Individual Defendants’ Sycomp devices for certain 28 activity, because those admissions—unlike the RFAs at issue on this motion—did not implicate or DLA I PER LLP (US) ALO L TO 12 SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 require Sycomp to divulge any protected work product. Id. Sycomp’s straightforward responses to these other discovery requests belie Trace3’s claims that it has a “compelling need” to delve into the processes and decision-making employed by Sycomp’s counsel. To be sure, Trace3 has not been deprived of “material facts bearing on Sycomp’s accepting the fruits of the misappropriation and sticking their heads in the sand.” MTC at 18. The facts just show otherwise: Sycomp does not have any alleged Trace3 trade secret. That Sycomp’s search proves what Sycomp has told Trace3 since April 24 (and does not support Trace3’s concocted theory of the case) does not mean Trace3 is being improperly deprived of any discovery to which it is entitled, nor justify Trace3’s attempt to intrude upon Sycomp’s work product. 10 Even if the work product information sought by these requests were not absolutely protected 11 from disclosure (which it is), these requests plainly seek “discovery on discovery” which is heavily 12 disfavored. See Uschold v. Carriage Servs., Inc., 2019 WL 8298261, at *4 (N.D. Cal. Jan. 22, 2019) 13 (“‘[D]iscovery on discovery’ is disfavored and, to be both relevant and proportional to the needs of 14 the case, a party seeking it ‘must show a specific deficiency in the other party’s production.’”); see 15 also Jensen v. BMW of N. Am., LLC, 328 F.R.D. 557, 566 (S.D. Cal. 2019) (same); Liberty Mut. 16 Ins. Co. v. Super. Ct., 10 Cal. App. 4th 1282, 1288 (1992) (federal discovery decisions are 17 historically persuasive absent contrary decisions). Generally speaking, “[p]laintiffs do not have a 18 right to conduct discovery into [a defendant’s] discovery methods.” Scherer v. FCA US, LLC, 2021 19 WL 5494463, at *3 (C.D. Cal. Nov. 23, 2021) (rejecting plaintiffs’ attempts to compel defendant 20 to identify its search and review parameters). Trace3 has provided no factual or legal justification 21 to do so here. Trace3 knows the ultimate facts: Sycomp has searched its relevant systems and 22 devices and has found no evidence that Sycomp possesses any alleged Trace3 trade secret 23 information. Anything more falls outside qualified “fact work product” and cannot be compelled. 24 Finally, Trace3’s cited cases are not to the contrary and do not provide any legal basis to 25 overrule Sycomp’s privilege and work product objections. See, e.g. In re Enforcement of Subpoena 26 Issued by FDIC, 2011 WL 2559546, at *1-2 (N.D. Cal. June 28, 2011) (written transcripts were not 27 protected work product absent showing that “the transcription process involves any creative or 28 analytic input from counsel,” and defendant showed substantial need); Jackson v. Cty. of DLA I PER LLP (US) ALO L TO 13 SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 Sacramento, 175 F.R.D. 653, 654 (E.D. Cal. 1997) (qualified federal official information privilege did not preclude disclosure of investigatory law enforcement files); Romero v. Allstate Ins. Co., 271 F.R.D. 96, 109-10 (E.D. Pa. 2010) (compelling parties to meet and confer regarding proposed search terms and custodians but declining to order defendant to disclose in detail past search methodologies). To be certain, Sycomp has shared with Trace3 and this Court its search terms and the custodians whose Sycomp records have been collected and searched in-line with FormFactor, Inc. v. Micro-Probe, Inc., 2012 WL 1575093 (N.D. Cal. May 3, 2012). In sum, Sycomp’s privilege and work product objections should be sustained. B. Sycomp’s responses to RFPs 1-52 are complete and proper. 10 1. Sycomp’s reference to the 8/15 Order is not an improper objection. 11 Trace3 argues Sycomp improperly “objected” to RFPs 1-52 and limited its production 12 because it clarified that its responses and production are subject to the limitations set forth in the 13 Court’s 8/15 Order. See MTC at 18-19. But there is nothing improper about Sycomp’s responses, 14 and there is nothing to compel. Tellingly, Trace3 provides no evidence that Sycomp has improperly 15 withheld any responsive documents on this basis and does not specify what, exactly, it seeks to 16 compel. Rather, Trace3 argues vaguely that this clarifying statement prevented it from “ascertaining 17 what, if anything, Sycomp was producing, on what terms, and what it was withholding based on 18 burden, if anything.” MTC at 19. But Sycomp already told Trace3 in its August 30 meet and confer 19 letter (which, again, Trace3 inexplicably failed to include or even reference in its motion) that 20 Sycomp was “not aware of any documents being withheld on this basis,” and that Sycomp would 21 amend its responses if that changed. See RD Decl. ¶ 9, Ex. 2. It has not. This is a non-issue. 22 This is another attempt by Trace3 to resurrect settled issues the Court has already resolved. 23 Trace3 made this argument in its 8/17 ex parte application—which the Court denied in full. 8/22 24 Order; 8/17 Ex Parte App. at 11-12, 15 (arguing Sycomp was “stretching the Order” to limit its 25 discovery obligations). Trace3’s attempts to reopen this Court’s prior orders ad nauseum are 26 improper and at this point sanctionable. In any event, as Sycomp explained then, the 8/15 Order 27 contains many important clarifications and limitations regarding the scope of discovery apart from 28 the Court’s express limitations as to RFPs 1, 2, and 4 in paragraph 8. 8/21 Ex Parte Opp. at 8. These DLA I PER LLP (US) ALO L TO 14 SYCOMP’S OPPOSITION TO TRACE3 MOTION TO COMPEL COMPLIANCE; CASE NO. 23CV415833 include the Court’s clarification that nearly all of Trace3’s requests are limited either explicitly or implicitly in time, that “Sycomp merely needs to answer these discovery requests to the best of its ability (and after doing an adequate investigation, as required by law),” that Sycomp need not violate the SPO in responding to Trace3’s requests, and that the scope of trade secret-related discovery is “now bounded by Trace3’s newly-amended trade secret disclosure, rather than the ‘TS/CI List and Kopelev Exhibits.’” 8/15 Order, passim. Sycomp’s confirmation that its discovery responses and production would be made subject to the Court’s discovery orders should not be controversial. The Court agreed, denying Trace3’s ex parte request for an order “clarifying that the stated limitation only affects those three requests” because it found that Sycomp “is doing [a 10 diligent] search” for responsive documents as required. 8/22 Order at 2. The Court’s prior order 11 should stand, and Trace3 should be sanctioned for its de facto request for reconsideration. 12 2. Lack of control over another’s information is a proper resp