Paramount Pictures Corporation v. ReplayTV, Inc., Joint Stipulation ...

12345678910111213141516171819202122232425262728required to produce both hard copy documents, and electronic data, that are storedin Defendants’ own files and computers. But, with the sole exception of the limitedmy.ReplayTV.com information discussed below, the information sought byPlaintiffs is not “ electronically stored” on Defendants’ computers. It does not existanywhere yet. It does not even exist on individual consumers’ PVR hard drives,much less on Defendants’ computers. And if the information is created, and aprogram written to log it in the future, it would exist on a consumer’ s personalproperty, not on ReplayTV’ s computers.Rather, Plaintiffs are asking the Court to order Defendants first to write aprogram to implant in a consumer’ s ReplayTV unit in order to create and store thedata, and then to write software to collect the data from consumers (without furthernotice to them) and disclose it to Plaintiffs. Neither Rule 34 nor case law obligesDefendants to take these extraordinary steps.Indeed, the only pre-trial authority under which Plaintiffs could obtain anorder requiring Defendants to design and implement software to extract nonexistentinformation would be a preliminary injunction under Rule 65. But toobtain a preliminary injunction, Plaintiffs must prove a cause of action (orlikelihood to prevail on one), as well as irreparable injury. A mere desire forinformation in a lawsuit challenging Defendants’ product cannot justify aninjunction to reformulate Defendants’ product. 37/The courts have consistently recognized that Rule 34 cannot require a partyto modify its product to perform differently and to gather information that it wouldnot otherwise gather. See, e.g., In re Air Crash Disaster, 1991 U.S. Dist. LEXIS10372, *4-*5 (N.D. Ill. 1991) (“ Rule 34 does not require a party to conduct tests onmachinery according to the opposing party’ s specifications” ; denying request forUnited Airlines to supply a DC10 airplane and an United flight crew to conduct asimulation relating to an airline crash); Sperberg v. Firestone Tire & Rubber Co.,61 F.R.D. 80, 83 (N.D. Ohio 1973) (Fed. R. Civ. P. 34 “ clearly does not justify . . .a procedure” under which defendants are compelled to conduct tests devised byplaintiffs on defendants’ products; denying patent infringement plaintiffs’ motion tocompel extensive tests of defendants’ products according to plaintiffs’specifications); Sladen v. Girltown, Inc., 425 F.2d 24, 25 (7th Cir. 1970) (reversingcourt order requiring plaintiffs to conduct flammability tests; Fed. R. Civ. P. 34does not empower court to order plaintiffs to conduct tests).37/49