The Plaintiff produced one multiple page PDF without any searchable text or metadata.  Indep. Mktg. Group., at *2.

The Defendant requested the Plaintiff do a reasonable search on their server for responsive ESI.  The Plaintiff responded by producing four “poor quality” PDF files without any search text.  The PDF’s were hundreds of pages long.  Indep. Mktg. Group., at *2.

In the course of the discovery dispute, the Plaintiff later refused to re-produce the ESI, claiming a $10,000 production cost was “a prohibitive cost that [Plaintiff] [was] not willing to incur for the production of the documents [Defendants] requested.” Indep. Mktg. Group., at *3.

The Plaintiff later produced disks with files that could not be opened, including system and temporary files. Indep. Mktg. Group., at *3-4, fn 1.

The Court was not thrilled with the Plaintiff’s discovery arguments.  The Plaintiff was a corporation seeking damages in the hundreds of thousands of dollars, plus punitive damages and attorneys fees. Indep. Mktg. Group., at *8.

The Court observed the Plaintiffs production methodology included identifying the responsive ESI on their computer, printing it as paper and then scanning the paper as a non-searchable PDF.  Indep. Mktg. Group., at *4-5.

The Court explained that the Plaintiff did not produce the ESI as it was ordinarily maintained by printing the ESI as paper and then scanning the documents as non-searchable PDF’s.  Indep. Mktg. Group., at *5.  Additionally, the ESI was not produced in a reasonably useable form, because it was non-searchable.  Id.

The Court rejected Plaintiff’s undue burden and cost arguments, noting that there is a presumption that the producing party incurs its own production costs.  Moreover, the Plaintiff never argued the data was not reasonably accessible, which would have been undercut by the fact they could search their computer for responsive ESI that was printed. Indep. Mktg. Group., at *6-7.

The Court ultimately granted to motion to compel, requiring the production to be re-produced in a reasonably useable form and denying an award of attorneys’ fees.

Bow Tie Thoughts

The Federal Rules of Civil Procedure and corresponding case law are abundantly clear that you cannot degrade searchable files.  Printing ESI and then scanning the paper as non-searchable PDF’s is simply not permitted by the discovery rules.

The other issue parties can end up in trouble over is arguing the cost of eDiscovery being unduly burdensome.  In a case worth hundreds of thousands of dollars, where the ESI is reasonably accessible, it is difficult to argue a production cost of $10,000 to be unduly burdensome.  It is more likely a party would spend a significant amount of money in motion practice, with the end result being the same discovery bill if the party simply produced the information correctly the first time.

The Defendants’ sales, printing and distribution database was originally produced as screenshots and then as an Excel file.  Bean, at *1-2.

The Excel file column headings contained many alphanumeric abbreviations, such as “LME4” and “VG Enc PAG.”  Bean, at *2.

After reviewing abbreviations reminiscent of a lens focal length formula, the Plaintiff brought a motion to compel the Defendants to produce a “key” to the abbreviations.  Bean, at *2.

The Defendants refused, arguing that the deposition testimony covered the abbreviations and that they did not have to create a document for the Plaintiffs.   Bean, at *2.

Federal Rule of Civil Procedure Rule 34(a)(1)(A) permits a party to request electronically stored information that is “stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form.” Bean, at *2, citing Fed. R. Civ. P. 34(a)(1)(A).

The Court explained a producing party has the burden of translating the ESI into a reasonably useable form.  Bean, at *2.

While the Excel spreadsheets were “generally” in a reasonably useable form, the “defendant’s use of cryptic abbreviations without definition renders these portions of the spreadsheets meaningless, just as if the data had been produced in code or in a non-readable format.”  Bean, at *3.

The Court disagreed with the proposition that the Defendant had already defined the abbreviations in deposition testimony, because it was the Defendants’ “burden to translate ESI into a useful format.”  Bean, at *3.

The Court reasoned the Plaintiff had requested the definitions of specific abbreviations.  As such, the Court found that requiring the Defendants “to supply definitions already in its possession is not overly burdensome compared to requiring plaintiff to sift through pages of documents.”  Bean, at *3.

Bow Tie Thoughts

It is novel argument, but logical a one, that “translation into a reasonable useable form,” could include producing a definition list of abbreviations.  Given how “text speak” could include a litany of shorthand abbreviations such as LOL (Laugh out Loud), the production of such a list might be necessary so “cryptic abbreviations” would not render a production meaningless.

There are valid arguments that such abbreviations could be defined in deposition or by special interrogatory.  However, requiring a party to conduct additional discovery to define abbreviations within the producing party’s control arguably goes against Federal Rule of Civil Procedure Rule 1, requiring the Federal Rules of Civil Procedure to be “construed and administered to secure the just, speedy, and inexpensive determination of every action and proceeding.”

The gravamen of the dispute was the Defendant’s argument to use a set of search terms that required precise matches between search terms and ESI. Custom Hardware, at *6.  The Plaintiff countered this narrow search would prevent discoverable information from being produced.  Id.

The Court reviewed several major cases involving search terms.  Citing Victor Stanley, Inc., the Court recognized that search terms are “appropriate and helpful” for searching ESI, along with having “well-known limitations and risks.”  Custom Hardware, at *7, citing Victor Stanley, Inc. v. Creative Pipe, Inc., 250 F.R.D. 251, 260 (D.Md. 2008).

Quoting the Sedona Conference, the Court stated limitations and risks exist because “[k]eyword searches identify all documents containing a specified term regardless of context[.]“Custom Hardware, at *7, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 201 (2007).

The Court explained search terms could simultaneously be over and under inclusive, finding ESI that is both irrelevant to the case and missing relevant ESI, due to word misspellings.  Custom Hardware, at *7-8. The Court summarized:

As a result, the usefulness of keyword searches as a means of discovery is limited “by their dependence on matching a specific, sometimes arbitrary choice of language to describe the targeted topic of interest.”

Custom Hardware, at *8, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 201 (2007).

The Defendants’ first objection can be summarized as the fear of producing privileged information.  Custom Hardware, at *11-13.  The Court curtly stated, “Defendants’ fears provide no basis to stymie the discovery process.”  Custom Hardware, at *11.

The Court cited case precedent regarding searching hard drives, the producing party may create a privilege log expressly explaining any privileged information.   Custom Hardware, at *11, [citations omitted] and Federal Rule of Civil Procedure Rule 26(b)(5)(A)). The Court stated:

As a result, fear of disclosure of privileged information provides no basis for Defendants to object to the discovery process. Instead, if Defendants find that responsive information is also privileged, they must so state in a privilege log…

Custom Hardware, at *11.

The Court took direct aim at the Defendants’ objection that the search terms would encompass “only irrelevant information.”  Custom Hardware, at *11.

The Court found the argument to be without merit and the Defendants’ objection merely a “conclusory statement, stated without any argumentation or other support.”  Custom Hardware, at *11-12.

Finally, the Court found the Defendants’ proposed search terms to be “problematic and inappropriate” because it would limit the responsive ESI to exact search term matches, including “phrasing, capitalization, or both.”   Custom Hardware, at *12.  The Court stated:

As a result, Defendants’ proposal would fail to produce discoverable ESI simply because of an inexact match in capitalization or phrasing between a search term and the ESI. This outcome is problematic, because whether information is discoverable under Rule 26(b) does not turn on the existence of an exact match in capitalization and phrasing.

The Court found the proposed exact matching search terms “would prevent Plaintiff form obtaining discoverable information and is inconsistent with the broad scope of discovery established by Rule 26(b)(1).”  Custom Hardware, at *13.

Bow Tie Thoughts

Objections to discovery requests cannot be solely out of fear.  An objection must have legal justification.  More importantly, any challenge to search terms must be substantiated with affidavits explaining the technology at issue and supporting evidence, such as a search term efficiency report or other documentation explaining the results of a keyword search.

Trying to control eDiscovery costs by requiring search terms to be exact matches will only result in missing responsive electronically stored information. Moreover, conducting a search of a litigation support database is not the same as conducting legal research.

In Rec Solar Grade Silicon LLC v. Shaw Group, Inc., 2011 U.S. Dist. LEXIS 51459, 40-41 (E.D. Wash. May 13, 2011), the Court ordered 31 keywords to searched over a dataset. These included the following;

7. “applied technical” or ats

25. weld! /2 test! or “weld-test”

My friend Charlie Kaupp at Digital Strata noted several issues with such search terms in a presentation we did together at PFIC.  For the search string “applied technical” or “ats”, it is advisable to avoid acronyms shorter than four letters and to determine a methodology to constrain the search.  Charlie recommended changing the search to “applied technical” OR (ats /20 (applied OR technical)), so the search was constrained with elements of the phrase term.

As for the 25^th search string, Charlie explained the “weld-test” term was redundant to the broader term with the proximity operator.  Additionally, by reducing the redundancy of the search terms, a user can conserve system resources when conducting a search.  As such, the revised search would simply be “weld! /2 test!.”

The lesson from the above: Involve a consultant to help draft a search methodology.

Technology is also expanding beyond keyword searches with concept search, predictive coding, advanced analytics and other clustering methodologies.  While the knee jerk reaction by some attorneys is “technology = expensive,” these new tools can be as much as an improvement to finding responsive discovery as flying in an airplane across the country is to driving a car.

(Disclosure: I have friends at and a professional relationship with the team at Digital Strata)

In Re National Association of Music Merchants, Musical Instruments and Equipment Antitrust Litigation

Instead of turning the discovery dial up to 11, the Court pulled the plug on the additional search terms.  In re Nat’l Ass’n of Music Merchs., Musical Instruments & Equip. Antitrust Litig., 2011 U.S. Dist. LEXIS 145804, 21-24 (S.D. Cal. Dec. 19, 2011).

Search Terms: I Still Haven’t Found What I’m Looking For

The Plaintiffs contented that the Defendants needed to run additional searches of their ESI that included abbreviations and acronyms for the previously agreed-upon search terms. In re Nat’l Ass’n of Music Merchs., at *17.

The Defendants were not cool with the Plaintiffs’ new song request.

If producing discovery was like recording an album, here is the digital booklet overview of the facts:

Before responding to the Plaintiff’s discovery requests, the Defendants asked the Plaintiffs to provide them with search terms.

Plaintiffs argued they could not provide search terms, because the Defendants had not provided them “relevant information.”

After reviewing the Defendants search strings, the Plaintiffs agreed with the Defendants to modify the Defendants search strings to include names to capture “Defendant-to-Defendant” communications.

In re Nat’l Ass’n of Music Merchs., at *17-18.

Once the Plaintiffs began their document review after the Defendants produced their ESI, the Plaintiffs learned abbreviations or acronyms were used in the internal communications.  In re Nat’l Ass’n of Music Merchs., at *18.

The Plaintiffs argued the Defendants’ search did not capture the “agreed-upon universe” of ESI because of the failure to include the internal abbreviations or acronyms.  In re Nat’l Ass’n of Music Merchs., at *18-19.

The Plaintiffs requested each Defendant to

(i) Identify abbreviations or acronyms commonly used within the Defendant corporation for any of the agreed-upon search terms, or affirmatively state that no abbreviations or acronyms are commonly used;

(ii) State whether the Defendant included all identified abbreviations and acronyms in its search for responsive documents; and

(iii) If abbreviations and acronyms were identified but not included in Defendant’s search, re-run its search and produce new responsive documents.

In re Nat’l Ass’n of Music Merchs., at *19.

Search Terms: Don’t Bring Me Down

The Defendants argued the Plaintiffs ignored a basic fact: the terms already searched were selected and agreed upon because they were the terms most likely to produce responsive documents.   In re Nat’l Ass’n of Music Merchs., at *19.

Moreover, the Defendants had already spent a substantial amount of time and money reviewing the prior production in what was supposed to be a limited discovery period.  In re Nat’l Ass’n of Music Merchs., at *19.

Additionally, the new search protocol would require the review of tens of thousands of additional responsive documents. In re Nat’l Ass’n of Music Merchs., at *20.

Further, the Defendants argued the Plaintiffs had “ample opportunity” to add abbreviations to the search methodology, but did not do so.  In re Nat’l Ass’n of Music Merchs., at *20.

Determining Keywords: With or Without You

The Defendants requested the Plaintiffs to meet and confer over search terms before the searches were run, which the Plaintiffs declined.  In re Nat’l Ass’n of Music Merchs., at *20.  Additionally, the Plaintiffs did not raise any objections or concerns over the Defendants proposed search terms they shared by letter with the Plaintiffs. In re Nat’l Ass’n of Music Merchs., at *20.

After the Defendants had begun their document review based on their searches, the Plaintiffs contacted each Defendant to expand their search terms, reaching an expanded search agreement with each Defendant. Id.

Judgment Day

The Court cited the search term truism that “effective search terms cannot be identified in an information vacuum and that a party’s ‘human knowledge’ should be utilized to craft keyword searches that are responsive to the “inherent malleability and ambiguity of spoken and written English.” In re Nat’l Ass’n of Music Merchs., at *21, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 201, 209 (Fall 2007).

Moreover, “[W]hile key word searching is a recognized method to winnow relevant documents from large repositories, use of this technique must be a cooperative and informed process.” In re Nat’l Ass’n of Music Merchs., at *21-22, citing In re Seroquel Products Liability Litigation, 244 F.R.D. 650, 662 (M.D. Fla. 2007).

The Court stated that the “preferable” method to reduce challenges to search terms is a “full and transparent discussion among counsel of the search terminology.”  In re Nat’l Ass’n of Music Merchs., at *22, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 204 (Fall 2007).

Finally, a Court may limit discovery if a requesting party has had “ample opportunity to obtain the information by discovery in the action,” or “if the burden or expense outweighs its likely benefit.” In re Nat’l Ass’n of Music Merchs., at *22, citing Fed. R. Civ. P. 26(b)(2)(ii), (iii).

The One That Got Away

The Court held the Plaintiff had “ample opportunity to obtain discovery regarding abbreviations and acronyms” and that the burden and expense of searching the abbreviations/ acronyms outweighed its likely benefit.  In re Nat’l Ass’n of Music Merchs., at *22-23, citing Fed. R. Civ. P. 26(b)(2)(ii), (iii).

The Court noted the Plaintiffs had two opportunities to suggest the Defendants include abbreviations/ acronyms in their searches and did not do so.  In re Nat’l Ass’n of Music Merchs., at *23.  As the Court explained:

In the spirit of the conclusions made at the Sedona Conference, and in light of the transparent discussion among counsel of the search terminology and subsequent agreement on the search method, the Court finds it unreasonable for Defendant to re-search documents they have already searched and produced.

In re Nat’l Ass’n of Music Merchs., at *23, citing The Sedona Conference Best Practices Commentary on the Use of Search & Information Retrieval Methods in E-Discovery, 8 Sedona Conf. J. 189, 204 (Fall 2007).

The Court further found ordering a re-search of the Defendants’ ESI was overly burdensome, because the Defendants had met & conferred with the Plaintiff and relied on their agreement over search terms in conducting their search and review for responsive ESI.  In re Nat’l Ass’n of Music Merchs., at *23-24.

Based on the above, the Court denied the additional searching of the Defendants ESI.

Bow Tie Thoughts

The search for electronically stored information is constantly a hotly debated topic.  Search generally may be conducted at the collection stage for strategic collections, during processing for data reduction and in document review.  Each stage has a slightly different methodology, but all have the same intent: find what is responsive.

The best time to discuss search terms between the parties is during a Rule 26(f) conference.  There is no shame in holding more than Rule 26(f) conference specifically dedicated to search terms between the parties search professionals, in order to ensure the search is as productive as possible.

Search technology is always improving to save time and costs by efficiently finding responsive electronically stored information.  One upcoming product leveraging new search technology is XERA by iConect.  In full disclosure, I recently did a webinar highlighting XERA and search technology.  iConect has also contracted with me for several continuing legal educational events on search technology.

XERA utilizes faceted search, which is a technique for accessing information organized according to a faceted classification system, allowing users to explore a collection of information by applying multiple filters. Wikipedia, Faceted search, http://en.wikipedia.org/wiki/Faceted_search.

Anyone who has done online shopping or booked airline travel has used faceted search technology.  XERA will use faceted search to improve the search and review of electronically stored information.

For more on XERA, please visit http://www.iconect.com/xera/

Jenkins v. Wash. Metro. Area Transit Auth., is litigation over a train crash between two Washington Metropolitan Area Transit Authority trains.  Jenkins v. Wash. Metro. Area Transit Auth., 2011 U.S. Dist. LEXIS 146065 (D.D.C. Dec. 19, 2011).

Like almost all litigation, the discovery dispute must have felt like a train wreck to the parties.

The discovery dispute can be summarized as follows: one subcontractor Defendant (hereinafter the Moving Party) brought a sanctions motion against another Defendant (Opposing Party), claiming they were prejudiced by the Opposing Party’s failure to produce certain information supporting the Moving Party’s defenses.  Jenkins, at *23-24.

The Moving Party also brought a motion for summary judgment, based on the sovereign immunity afforded the Opposing Party because it was Opposing Party’s contractor. Jenkins, at *15.

In its initial disclosures, the Moving Party identified witnesses from the Opposing Party and documents that supported the Moving Party’s defenses.  Jenkins, at *15-16.

The Opposing Party produced eight witnesses, allowed a site inspection of the Operations Control Center and produced 3,348,483 pages of electronically stored information.  Jenkins, at *16. The Opposing Party produced 2,476,363 pages.  Both productions were reviewed in a litigation support software.  Id.

Additional discovery from custodians was later produced, including depositions and over 4,000 documents.  Jenkins, at *17.

The co-Defendants shared an e-Discovery service provider.  The Opposing Party represented that “it was not asked and therefore did not provide the names of the “custodians” of the produced discovery since it believed that [the Moving Party] had equal access to the names” of the custodians. Jenkins, at *14.

The Moving Party argued the late production prejudiced them, because if it “had the documents sooner it could have done additional follow up discovery during the discovery period and then used the documents produced and perhaps other information developed therefrom in the motion for summary judgment it has now filed.”  Jenkins, at *18, citing the Moving Party’s Reply to the Opposition to the Motion for Sanctions.

Judge Facciola quickly, and with candid relief, stated at the beginning of his analysis:

There being no evidence of any loss of data, the complicated principles pertaining to preservation and spoliation do not, thankfully, have to be considered.

Jenkins, at *19.

The Moving Party claimed sanctions were appropriate because the Opposing Party did not comply with its initial disclosure obligations under Federal Rule of Civil Procedure Rule 26(a) by producing information related to the government contractor defense.  Jenkins, at *19.

The Opposing Party countered that they were not going to assert the government contractor defense, thus they had no duty to produce information related to that defense.  Jenkins, at *19.

The Moving Party argued in a footnote that Federal Rules of Civil Procedure require the production of requested documents that are relevant to “any party’s claim or defense,” not just those claims or defenses that pertain specifically to the producing party. Jenkins, at *20, citing Fed. R. Civ. P. 26(b)(1). 

The Court quickly zeroed in on the difference between initial disclosures under Rule 26(a) verse the scope of discovery under Rule 26(b)(1).  Jenkins, at *20.  The Court noted that the Moving Party’s view of initial disclosures would amend Rule 26(a) as follows:

(A)           . . . [A] party must, without awaiting a discovery request, provide to the other parties:

(i)                      the name . . . of each individual likely to have discoverable information-along with the subjects of that information-that any party may use to support its claims or defenses, unless the use would be solely for impeachment;

(ii)                     a copy-or a description by category and location-of all documents, electronically stored information, and tangible things that any party . . . may use to support its claims or defenses, unless the use would be solely for impeachment;

As the Court noted, changing “disclosing party” to “any party” would “impose an extraordinary new obligation on the parties to a lawsuit…” Jenkins, at *21. The Court rejected this construction of Rule 26(a).

The Court found there was no sanction available under Rule 26(a).  Jenkins, at *21.  Further, there was no violation of a discovery order by the Opposing Party or any clear and convincing evidence of bad faith. Jenkins, at *22.  Accordingly, the Court denied the Moving Party’s motion for sanctions. Jenkins, at *23.

Bow Tie Thoughts

Initial Disclosures require a party to identify all electronically stored information within its possession, custody or control to support any of its claims or defenses in a lawsuit.  Fed. R. Civ. P. 26(a)(2).  Additionally, a party must make their Rule 26(a) Initial Disclosures based on information “reasonably available to it.” Moreover, the failure to identify ESI that supports a claim or defense can result in the discovery being excluded from a case.  Fed. R. Civ. P. 37(c)(1).

The prospect that initial disclosures could be read to apply to “any party” instead of the “disclosing party” is a sobering thought.  It would tear apart the entire concept of requesting discovery like wrapping paper if a party had to disclose “any party’s” claims or defenses.

There are many benefits to informal discovery between parties and agreeing to production during a meet & confer. Moreover, there is an attorney’s overall duty of candor to the court to avoid making false arguments based on the information within one’s control.  However, the prospect that a party need to review and disclose the ESI in its control that supports another party’s claims or defenses would add a new burden on litigants.

The expert ran a combination of approximately 60 keywords, including French words, keywords expanded as wildcards and Boolean connectors, across all of the data on the computer system.  This included unallocated space.  The search was not targeted to specific custodians, relevant time periods or active files.  I-Med Pharma Inc., at *5-6.

Examples of the search terms included:

back order*

product*

profit*

HS*

I-Med Pharma Inc., at *5-6.

In the words of the Court:

The results should come as no surprise. The broad search terms hit millions of times across the large data set. In the unallocated space alone, the terms generated 64,382,929 hits. These hits represent an estimated 95 million pages of data.

I-Med Pharma Inc., at *6.

The opinion does not discuss whether any de-duplication, near-de-duplication, de-NISTing or other data reduction methodologies were applied to the keyword “hits.”

The Court expressed its concern in a footnote over the parties referring to keyword “hits” as separate documents.

As the Court explained:

Given the volume of hits and search terms used, this is essentially impossible—statistically speaking terms like “profit,” “loss,” “revenue,” and “profit” frequently occur together, and it stands to reason that at least some files mentioning product lines would make reference to more than one at the same time. Consequently, the Court is left to wonder whether the total hit and estimated page numbers are genuinely correct.

I-Med Pharma Inc., at *7, fn 4.

The Plaintiff was not thrilled at the idea of conducting a privilege review of the large data set.  The Magistrate Court agreed, issuing an order: 1) Allowing the Plaintiffs to withhold ESI from the unallocated space and 2) Permitting the Defendants to seek reimbursement for their search from the Plaintiff.  I-Med Pharma Inc., at *7.

The Magistrate Judge also found:

1) Good cause existed to modify the original discovery order, because the burden on the Plaintiffs would “outweigh any potential benefit that may result.”

2) Defendants had not met its burden of demonstrating the complete relevancy of the ESI they sought, including that the Defendant had not identified any ESI destroyed by the Plaintiff. 

3) The overbroad search terms made the likelihood of finding relevant information that would be admissible at trial “minimal.”

I-Med Pharma Inc., at *7-8.

The Defendants appealed the Magistrate Judge’s order.  The District Court affirmed.  I-Med Pharma Inc., at *8, 18.

The Defendants had the difficult task of demonstrating the Magistrate Judge’s order was “clearly erroneous or contrary to law.” I-Med Pharma Inc., at *8.

The District Court described the Magistrate Judge’s order as “reasonable exercise of…discretion in managing the scope of permissible discovery.” I-Med Pharma Inc., at *11.

The Defendants argued the Magistrate Judge applied the wrong standard to granting the relief from the original stipulation.  The Defendants argued “exceptional circumstances” were required to grant relief from the stipulation, citing a case involving a stipulation on liability.  I-Med Pharma Inc., at *11-12.

The Court explained that the scope of discovery is very different than a party attempting to withdraw an admission of wrongdoing post-trial.  I-Med Pharma Inc., at *13.

As the Court stated:

During discovery, the parties are still actively uncovering the evidence needed to bring a case to trial and have ample opportunity to modify and adjust their litigation strategy to any important developments. Clearly a court has the power to modify stipulations concerning discovery terms and deadlines while discovery is still ongoing without the showing of manifest injustice. A court could not effectively perform its duty to fairly and efficiently manage discovery if every minor change to a stipulated briefing schedule or deposition date required a showing of “exceptional circumstances” or “substantial and real harm.” While courts should not casually discard agreements between the parties, nor should they abrogate their duty to balance both burden and the likelihood of uncovering relevant evidence merely because a party made an improvident agreement.

I-Med Pharma Inc., at *13-14.

Even if the “clearly erroneous” standard applied, attorneys reviewing potentially 65 million “hits” (or 95 million pages of data) for privilege would be very expensive.  I-Med Pharma Inc., at *14-15.

The Court also rejected the Defense argument that privilege review could be limited by simply searching for the word “privileged.”  The Court explained the problems with such a search:

Even when dealing with intact files, potentially privileged information may often be found in emails, memoranda, presentations, or other documents that are not explicitly flagged as privileged or confidential. And since the data searched here is likely to contain fragmented or otherwise incomplete documents, it is entirely possible for privileged material to be found without its original identifying information.

The Court upheld the Magistrate Judge’s order, closing the opinion with a cautionary message on search terms:

While Plaintiff should have known better than to agree to the search terms used here, the interests of justice and basic fairness are little served by forcing Plaintiff to undertake an enormously expensive privilege review of material that is unlikely to contain non-duplicative evidence.

I-Med Pharma Inc., at *17-18.

Bow Tie Thoughts

Parties get into trouble with search terms all the time. Moreover, a party may agree to a search methodology that they later regret. This can happen in multiple stages of discovery, whether it is collection, early case assessment, processing or discovery review.  Each stage involves using “search” technologies, but a search string used in a review platform to find ESI for a deposition might be too narrow at the collection stage.

While the facts of case will control whether unallocated space needs to be searched, the prospect of conducting a privilege review of millions of files the “old fashion way” is mind numbing.  It would be like trying to find a needle in a swimming pool of needles.

If extremely large data sets need to be reviewed, mechanical analytics is one way to expedite review and control discovery costs.  There are multiple products on the market with “predictive coding” abilities that learn from reviewers which ESI that is responsive, thus “machine coding” the files as “relevant” or “privileged.”

The effectiveness of this technology will turn heavily on who does the initial review, whether it is a combination of attorneys who understand the subject matter of a case; information from the parties on how they communicated and the language used in the case; types of relevant ESI; search terms or concepts agreed to by the parties in a meet and confer; plus a host of other factors.

I am sure there are eDiscovery attorneys and Magistrate Judges eagerly awaiting the right case were this technology has been properly used; the methodology documented; and declarations from the software developers explaining the science of the algorithms.  When that day happens, one judge can issue an opinion validating the use of mechanical analytics in identifying responsive electronically stored information. 

Attorneys will always be needed to decide what ESI to use in a deposition or trial, because a human being is better at determining what will convince other human beings the “truth” of a case.  However, technology can make finding what is relevant out of a data set with 65 million records far more effective than a brute force review of each record.

Please vote for Bow Tie Law in the ABA Journal Blawg 100in the IP Law category.

Defendants’ Spoliation

The allegations against the Defendant involved the preservation of security video.  The Defendants had three weeks to preserve the video, but were unable to copy or transfer the video off the security camera system. Patel, at *14-15.

The Defendants argued their video system was unable to copy video to a CD or DVD.  Moreover, they explained they contacted a video system service provider to help transfer the video.  However, despite these efforts, the video was recorded over after three weeks.  Patel, at *15-16.

The Court found the failure to preserve the video was spoliation, finding that because of the accident, a lawsuit was “reasonably likely,” thus triggering the duty to preserve the video evidence.  Patel, at *16.

The Court issued an adverse inference instruction for the loss of the video evidence.  Patel, at *25.  

An adverse inference instruction is ordered under the following circumstances:

(1) The evidence in question was within the party’s control;

(2) There appears to have been actual suppression or withholding of the evidence;

(3) The evidence in question was relevant to the claims or defenses; and

(4) It was reasonably foreseeable that the evidence would be discoverable in litigation.

Patel, at *26, citing Mosaid Techs. Inc., v. Samsung Elecs. Co., Ltd., 348 F. Supp. 2d 332, 336 (D.N.J. 2004).

Case law does not require the destruction to be intentional, stating “negligent destruction of relevant evidence can be sufficient to give rise to the spoliation inference.” Patel, at *26, citing Mosaid Techs. Inc., v. Samsung Elecs. Co., Ltd., 348 F. Supp. 2d 332, 338 (D.N.J. 2004).

The Court held the following against the Defendants:

Here, the spoliation inference is appropriate because the video footage was within Havana’s exclusive control; the video was not preserved before its destruction because Defendants failed to follow through with the steps necessary to ensure preservation; the footage of the bar and the area in which Plaintiff fell on the night of the incident is clearly relevant to Plaintiff’s claims; and Defendants knew or should have known that the footage would later be discoverable given their knowledge of Plaintiff’s injuries and the likelihood of suit. Defendants will of course be permitted to explain to the jury the steps they did take to preserve the footage.

Patel, at *26.

Plaintiffs’ Spoliation

The spoliation claim against the Plaintiff involved his sister-in-law sending two messages on Facebook in 2008 and 2010 for witness statements from party attendees.  The Defendants did not learn about these witness statements until the deposition of one of the party attendees.  Patel, at *16-18.

The Defendants claimed the Plaintiffs “spoon-fed friendly witnesses testimony that would support their case theories, and then lost or destroyed evidence that would not support their current case theory.” Patel, at *17.

The Plaintiffs claimed the witness statements collected by the sister-in-law were protected from disclosure under the work product doctrine.  Patel, at *17.

The Court stated in a footnote about the work product argument:  “We are at a loss to understand how statements provided by non-party individuals could constitute “attorney-client” material.”  Patel, at *21, footnote 4.

The Court held the loss of the 2008 witness statements were “clearly spoliation.”  Patel, at *17.  The Court explained the Plaintiff or his family had the statements in their possession and thus had a duty to preserve them. Patel, at *18.

As the Court explained:

Even if the work product privilege did somehow come into play, this privilege was belatedly raised, and documents were withheld without ever notifying Defense counsel. This type of discovery practice is directly contrary to Fed. R. Civ. P. 26(b)(5), which requires a party who withholds information based on a claim of privilege to expressly raise that privilege and describe the nature of the withheld documents in a privilege log.

Patel, at *18.

The Court also found the failure to disclose the witness statements violated the Plaintiffs’ initial disclosure obligations under Federal Rule of Civil Procedure Rule 26(a).  Patel, at *22.

Pursuant to Federal Rule of Civil Procedure 26(a)(1)(A), parties must disclosure individuals and information that supports their claims or defenses.  Patel, at *19.  This is to make discovery more effective and prohibit gamesmanship of a party not producing relevant information on the grounds the opposing party did not specifically request the information. Patel, at *19-20.

As the Court explained on the failure to produce the witness statements:

Put more directly, this is the type of “basic, substantive evidence” that should have been produced “without resort to the complications, inefficiency, and litigiousness of discovery practice.” [citation omitted]. Plaintiff should have known that the witness statements would eventually be discoverable under Rule 26(b)(3)(A), and that producing the statements piecemeal was not in any way designed to foster the fair and efficient exchange of information.

Patel, at *23.

The Court ordered an adverse inference instruction for the loss of the witness statements.  Patel, at *29.  After finding all four spoliation factors met, the Court stated:

We believe the best way to sort out Plaintiff’s discovery misconduct is to allow the jury to draw its own conclusions as to the evidentiary value of how the evidence was handled.

Patel, at *29-30.

The Court further ordered the re-deposition of five of the Plaintiff witnesses, at the cost of the Plaintiff.  Patel, at *30.

The Court also awarded attorneys’ fees and costs for the time spent to acquire discovery they were rightfully entitled to.  Patel, at *30.  The Court stated the Defendants’ itemization of $20,000 looked reasonable, but would not set a specific award until the Plaintiffs could respond to the itemization.  Patel, at *30-31.

Bow Tie Thoughts

This case is a strong reminder, with adverse inference instructions against both parties, about the importance of preservation.

The preservation of evidence is a challenge for litigants of every type, from private individuals to large companies.  Identifying ESI for preservation can often having many moving parts, frequently resembling a high-speed fan.

It is no secret from case law that electronically stored information can easily be lost.  Preserving relevant data requires having individuals trained in data collection preserve ESI after a triggering event has occurred.  While there are many ways to collect data, such as mirror images, targeted collections or remote methodologies, it is vital to engage a collection expert early to ensure relevant ESI is not lost.

Social media is only expanding where there might be responsive electronically stored information in a lawsuit.  In this case, two Facebook messages seeking witness statements were key exhibits into the spoliation claims.  There are many other examples.

This case is also a reminder that attorneys should add inquiries about social media to their discovery plans.  While social media will not be present in every case, it is an excellent topic for client interviews and Rule 26(f) conferences.

We value Joshua Gilliland’s Bow Tie Law blog—an exhaustive look at e-discovery issues—for being on the cutting edge of evidentiary news, and for explaining the nuts and bolts in a clear and concise manner. This attorney from Santa Clara, Calif., is also quite the snazzy dresser.

I started this blog to analyze eDiscovery cases and highlight solutions in reviewing ESI. I hope I have helped attorneys understand some of the “knotty” issues of electronically stored information. Again, thank you for this honor.

I will also continue to do my best to promote the maxim, “Bow Ties Are Cool.”

The ABA Journal is now asking readers to vote on their favorite Blawgs in each of the 5th Annual Blawg 100’s 12 categories. Please go to http://www.abajournal.com/blawg100 to register and vote. Voting ends at close of business on Dec. 30, 2011. Bow Tie Law is in the IP Law category.

The use of the online review database was born out of a production dispute.  The Producing Party initially proposed producing email messages as 1) a hard copy production of the e-mails; 2) converting them to TIFF format, or 3) loading them onto a local terminal at its offices and allowing the Requesting Party counsel to review them on site only. In re Ricoh Co., at *5.

The Requesting Party [very rightly] objected to the Producing Party’s form of production proposals and sought the email produced in native file format.  In re Ricoh Co., at *5.

The Requesting Party recommended a hosted review provider and to divide the hosting costs between the litigants.  In re Ricoh Co., at *5-6.

After the conclusion of the lawsuit, the Producing Party argued that because the hosted review platform was used for the email production, the full hosting costs were taxable.  In re Ricoh Co., at *6.

The Court agreed that the use of the online review platform was taxable under 28 U.S.C. 1920(4), because the “database was used as a means of document production in this case.” In re Ricoh Co., at *7.

However, there was a very BIG however: the joint contract with the hosted service provider that contained a cost-sharing provision.

The Court cited to a case from 1975, which held that it was “proper” to “exclude from costs awarded certain charges because ‘[t]he parties had agreed to share the expense for [that] service.’” In re Ricoh Co., at *10, citing Thomas v. Duralite Co., 524 F.2d 577, 590 (3d Cir. 1975).

The Court of Appeals zeroed in on the 14-page joint hosting contract that included a cost-sharing agreement between the parties.  In re Ricoh Co., at *11.  As the Court of Appeals stated:

The parties characterized this agreement as a cost-sharing agreement, but never indicated that the cost-sharing was only temporary. Communications between the parties after the agreement with Stratify was executed continued to reflect the cost-sharing agreement.

There is no indication in any of the extensive communications between the parties that they intended this cost-sharing agreement to be anything other than a final settlement of the cost of the Stratify database.

 If the cost-sharing agreement were designed to be only an interim agreement, it seems likely that there would have been some indication to that effect in either the communications between counsel or the agreement with Stratify. Under these circumstances, the parties’ agreement is best interpreted as agreeing to a final, not an interim, sharing of costs.

In re Ricoh Co., at *11-12.

The Court held the hosting agreement was controlling and reversed the award of $234,702.43 for hosting costs.

Bow Tie Thoughts

It is good that courts recognize hosting fees for an online review platform as recoverable costs.  This opinion puts parties and service providers on notice to watch out for the terms in a shared hosting agreement.  If there is a possibility a party may seek costs for a shared hosted review database, a clause should be put into the agreement about cost-shifting for a prevailing party.  This should be a Rule 26(f) meet and confer topic if a shared-hosting platform is being considered.

Online review databases have many benefits.  In large multi-party lawsuits, the volume of ESI to review is often too large for a law firm to maintain.  Having the data hosted by a third-party allows the law firm to focus on the subject matter of the case, opposed to investing in both the hardware, software and expertise to effectively set-up the discovery for review.

Large law firms are not the only ones using online review software.

Hosted solutions can also allow judges to have access to the discovery if the case so requires.  In El-Amin v. George Wash. Univ., 2008 U.S. Dist. LEXIS 85009 (D.D.C. Oct. 22, 2008), Judge Facciola ordered the parties to consider using a hosted review platform that could “easily used by counsel and by the Court.”  For more, see Court Orders For Hosted Review Solutions: When the Judge Wants to See the Discovery Too.

Highlighting the advantages of an online review platform, Access Data has been very gracious to host my high school mock trial team’s fictional case in Case Vantage.

The students are using Case Vantage to review the witness statements; identify facts supporting the causes of actions/defenses; recognize evidentiary issues; determine hearsay objections and the corresponding hearsay exceptions. Issue codes were created for the different charges against the fictional defendant based on the assigned jury instructions.

The students are also posting outlines of their pre-trial arguments, opening statements, closing arguments, and witness examinations for me to review online.

Whether an online review platform is being used in a complex case subject to a protective order or by high school students learning how to build a case, there are many advantages to using online hosted review.

As the Court later commented on the production protocol, “the parties did not produce ESI in the manner in which it is kept in the usual course of business, which, at a minimum, would identify the provenance of the files and provide some context as to their meaning.” City of Colton, at *48.

One Defendant brought a motion to compel well into discovery, arguing the United States did not comply with Federal Rule of Civil Procedure Rule 34(b)(2)(E)(i). The Defendants claimed the United States was required to produce documents and ESI as they were kept in the usual course of business or organize and label the production to correspond to the Production Requests.  City of Colton, at *29-30.

The United States argued the case management order superseded the requirements of Rule 34(b).  City of Colton, at *30.  Furthermore, the United States argued that the production of electronically stored information was controlled by Federal Rule of Civil Procedure Rule 34(b)(2)(E)(ii), which requires ESI to be produced as it is ordinarily maintained or in a reasonably useable form.  City of Colton, at *30-31.

Federal Rule of Civil Procedure Rule 34(b)(E) states:

  (E) Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:

         (i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;

         (ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms;

USCS Fed Rules Civ Proc R 34

The Special Master assigned to the case first heard the dispute and concluded that the case management order did not exempt the parties from Federal Rule of Civil Procedure Rule 34’s requirements.

Moreover, the Special Master found Rule 34(b)(2)(E)(i) applies to electronically stored information as well as paper documents.  The United States was ordered to either re-produce its prior production in native file format with corresponding metadata or “categorize by Production Request the Bates numbers of all previously produced ESI.” City of Colton, at *31-32.

Magistrate Judge Suzanne Segal agreed with the Special Master’s analysis that found Rule 34(b)(2)(E)(i) applies to electronically stored information as well as paper documents.

As a preliminary matter, the Magistrate Judge did not find any intent by the Judge who issued the case management order to deprive the parties their rights under the Federal Rules of Civil Procedure to ensure a production was organized in a “satisfactory way.”  City of Colton, at *33-36.

The Court engaged in a highly detailed review of the Advisory Committee Notes to Federal Rule of Civil Procedure Rule 34(b)(2)(E).  The Court recounted that the Advisory Committee specifically recognized that the term “document” encompassed ESI as a general rule:

“[A] Rule 34 request for production of ‘documents’ should be understood to encompass, and the response should include, electronically stored information unless discovery in the action has clearly distinguished between electronically stored information and ‘documents.’” Fed. R. Civ. P. Rule 34 advisory committee’s note (2006 Amendment, subdivision (a)). The notes specifically admonish that “[r]eferences to ‘documents’ appear[ing] in discovery rules that are not amended . . . should be interpreted to include electronically stored information as circumstances warrant.” Id.

City of Colton, at *39.

Furthermore, the Court also stated that ESI productions may not be “randomly organized:

Rule 34(b) provides that a party must produce documents as they are kept in the usual course of business or must organize and label them to correspond with the categories in the discovery request. The production of electronically stored information should be subject to comparable requirements to protect against deliberate or inadvertent production in ways that raise unnecessary obstacles for the requesting party. Rule 34(b) is amended to ensure similar protection for electronically stored information.” Id. (2006 Amendment, subdivision (b)).

City of Colton, at *40.

Based on the above, plus other case precedent, the Court found that Federal Rule of Civil Procedure Rule 34(b)(2)(E)(i) applied to ESI productions that they “must” be produced as they are kept in the usual course of business or “must” be labeled to correspond to the discovery request.  City of Colton, at *44.  As the Court explained:

While the specific information a producing party must provide when organizing a production “in the usual course of business” may vary in its details according to the type of document or file produced, it is clear that parties are entitled under the Federal Rules to rationally organized productions so that they may readily identify documents, including ESI, that are responsive to their production requests.

City of Colton, at *47.

The Court went on to state the following:

Unless and until the parties agree to amend their production protocol to include metadata fields sufficient to satisfy the requirement under Rule 34(b)(2)(E)(i) that documents, including ESI, be produced as they are kept in the usual course of business, the Rules require the United States (and Defendants) to organize and label their productions to correspond to the categories in the request.

City of Colton, at *48-49.

The Court addressed a practical issue in the case: there had been over 500 discovery requests from the Defendants.   The Court noted that identifying the ESI responsive to each request could be both “challenging” and “time-consuming.”  City of Colton, at *49.

The Defendants explained a “compromise” between the parties, where the United States would produce its ESI in native file format as a “substitute” for producing the ESI as it was kept in the usual course of business and instead of labeling its production to correspond to the Production Requests. City of Colton, at *49.

The Court accepted the compromise, stating:

“…because a simultaneous production in native format will provide Defendants with the metadata necessary to identify the provenance of each document and put it into its proper context, the United States may, at its option, provide Defendants with a copy of ESI in native format in any future production in lieu of labeling the production, in addition to producing ESI in TIFF or JPEG format to the Encore common repository pursuant to the parties’ current production protocol.”

City of Colton, at *49-50.

The sole footnote in the opinion stated the following on a blended production with metadata:

The Court strongly encourages the parties to consider the alternative of a new agreement concerning which metadata fields with TIFF/JPEG formats would provide identifying information sufficient to organize an ESI production that is usable for the receiving party and to amend their production protocol accordingly. Such an agreement would allow the United States to avoid the expense of producing ESI in both native and TIFF/JPEG formats, should it exercise that option, and would similarly allow Defendants to avoid the expense of reviewing ESI in two different formats and cross-referencing the productions. Furthermore, TIFF or JPEG productions with embedded metadata would enable Defendants to perform the various field searches they claim are necessary to make sense of the production and would be immediately available for use as exhibits without further processing. This would likely be more useful to Defendants than a report identifying the Production Requests to which documents are responsive with no contextualizing metadata.

City of Colton, at *50-51, fn 1.

Bow Tie Thoughts

I have been a Civil Procedure geek since my first day of law school. Magistrate Judge Suzanne Segal did an exceptional job reviewing past cases, the committee notes and applying practical knowledge on the issue of whether ESI is included in Federal Rule of Civil Procedure Rule 34(b)(2)(E)(i).

Many attorneys and judges have waded into the issue of whether Federal Rule of Civil Procedure Rule 34(b)(2)(E)(i) also applies to electronically stored information.  The plain language of the Rule says “documents.”  Moreover, Federal Rule of Civil Procedure Rule 34(b)(2)(E)(ii) specifically states “electronically stored information,” highlighting the difference between the two types of discoverable information.  Reading the two sections separately is something many lawyers have been doing since 2006.

On a fundamental level, a party producing any discovery, digital or paper, should not make a disorganized production.  As Judge Suzanne Segal stated, “…it is clear that parties are entitled under the Federal Rules to rationally organized productions so that they may readily identify documents, including ESI, that are responsive to their production requests.”  City of Colton, at *47.

For anyone who has done hours of document review, having the producing party label the production to correspond to the categories in the requests for production makes review (a little) less burdensome.

One way to accomplish labeling productions can be achieved in most of the review products on the market with issue coding.  While conducting review for ESI or documents responsive to a specific request, create issue tags at that time for the production requests.  For example, “Request for Production 7,” would be RFP007.  The three digit number system would allow for easier sorting in a data by discovery request.

When ESI is determined to be responsive to a request, code it accordingly with its request code.  At the time of production, add that field of information with the other extracted text/metadata fields to be produced.  Logging this information can increase organization for both the requesting and producing parties to a lawsuit.

The above is one way to help organize a production.  There are many other ways to use review tools and processing engines to generate information to label a production to comply with Rule 34(b)(2)(E)(i). Whatever is determined should be agreed upon before document review to increase efficiency.

Discovery wounds are sometimes self-inflicted.  Converting native files to static images and not producing the standard bibliographic extracted text and metadata can unintentionally drive up discovery review.  As a practical matter, everything that once was searchable has had that feature removed.  Additionally, fields of extracted text that could have populated a review database are now empty, waiting for a reviewing attorney to re-enter (at an hourly rate) what should have been produced as a matter of right.

The Court had a very good point in the one footnote about having two different production protocols in one case.  Virtually all of the review products on the market can handle blended productions of both ESI and static images such as TIFFs. Moreover, most processing software can produce discovery as native files and TIFFs if there is a need for a blended production.  However, this is far easier to do at the beginning of discovery, opposed trying to link a prior production in TIFF format to one with native files. While the technology can handle the different formats, the blended cross-productions having different fields of information can complicate review.