Bluestar Genomics v. Song

Background

Bluestar Genomics asked the court to compel Dr. Chuxiao Song to produce documents responsive to Requests for Production Nos. 5, 7, 8, 13, 17–32, and 37–41. The requests sought documents concerning the assignment and licensing of the 5mC and TAPS cancer-detection technologies, as well as their transactions, valuations, research, and design.

The claims in the case arise from an alleged breach of a consulting services agreement between Bluestar and Dr. Song. The opinion states that Dr. Song allegedly developed the technologies while employed at the University of Oxford and assigned rights and interests in them to the Ludwig Institute for Cancer Research Ltd. rather than to Bluestar.

Bluestar served its requests on October 23, 2023. Song’s responses and objections were due November 22, 2023, but he did not serve them until January 19, 2024. Song explained that he needed to communicate with Oxford and Ludwig about producing documents stored on Oxford’s computer system. Oxford told Song that documents he could access as an Oxford employee belonged to the university unless established otherwise, could contain confidential or privileged information, and could be produced only by Oxford or with its consent. Oxford did not consent to Song’s production of the documents in response to these requests.

Rule 34 Waiver

Bluestar argued that Song waived his objections by failing to respond within Rule 34’s thirty-day deadline. The court declined to impose an automatic waiver. Instead, it applied a six-factor balancing test addressing the length and reason for the delay, bad faith, prejudice, the nature of the requests, and the harshness of imposing waiver.

The court found that the delay was significant and weighed that factor in Bluestar’s favor. It found that the need to investigate Oxford’s consent requirements was a reasonable explanation for the delay, that the record did not show bad faith, and that Bluestar had not shown meaningful prejudice from the delay. The court also found that the complex subject matter and number of requests made it reasonable to expect that responding could require more than thirty days. Finally, automatic waiver could have required Song to produce documents from Oxford’s system despite Oxford’s stated lack of consent and could have exposed him to possible sanctions by Oxford.

The court therefore found good cause to excuse Song’s two-month delay and considered his objections.

Possession, Custody, or Control

Under Federal Rule of Civil Procedure 34, a party must produce relevant documents in the party’s “possession, custody, or control.” The court explained that, under Ninth Circuit law, control means a legal right to obtain documents on demand, not merely a practical ability to obtain them. Bluestar bore the burden of proving that Song had that control.

Bluestar relied mainly on Song’s earlier production of documents from Oxford’s system. The court held that the earlier production did not establish that Song currently had a legal right to obtain other Oxford documents on demand. The court also rejected the argument that Song’s ability to log into his Oxford account and download files necessarily gave him possession of those documents for Rule 34 purposes.

After reviewing Song’s employment contract, Oxford’s information-technology regulations, and Oxford’s communications, the court found that Song lacked the legal right to produce all responsive documents from Oxford’s system. The court emphasized that Oxford had not consented to production, that Song was an employee rather than an Oxford officer or executive with high-level authority, and that Bluestar had not shown that Oxford was legally required to provide the documents to him.

The court upheld Song’s objection and found that he did not have possession, custody, or control over the documents responsive to the listed requests. Because of that finding, the court did not need to decide whether producing the documents would also violate a confidentiality or nondisclosure obligation; it found that objection moot.

Disposition

Judge Tigar’s order denied Bluestar’s request to compel production. The order did not require Song to produce the requested Oxford-held documents.