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I am an attorney CLE presenter on e-Discovery issues.

Hard to Decide Discovery Disputes on Proportionality if No One Knows the Value of the Case

Magistrate Judge Paul Grewal ordered the supplemental production of damages information in a patent case based on proportionality and supplemental disclosures. Corning Optical Communs. Wireless v. Solid, Inc., 2015 U.S. Dist. LEXIS 49069, 5-8 (N.D. Cal. April 14, 2015). This is a unique argument that makes a lot of sense: How can the Court decide discovery issues without knowing the value of a lawsuit?

Judge Grewal highlighted a common occurrence in patent infringement litigation: Neither party can say how much the case is worth. Corning, at *2.


Parties are required to give some damages-related information as part of their Rule 26(a) initial disclosures. The Plaintiff in the current case stated for this required disclosure: “No documents related to this calculation exist at this time.” Corning, at *7.

Judge Grewal looked to a quote from Judge Alsup on this issue in patent cases:

Only to the extent that, and only for so long as, the patent plaintiff is unable, despite its Rule 11 obligations, to fully satisfy the Rule 26(a) disclosure requirement, a patent plaintiff is temporarily excused from disclosing a shortfall in information (but it must disclose the rest at the outset). The burden is on the patent plaintiff to explain in its Rule 26 initial disclosures the extent of any such disability and the reason therefor. This must be specific—such as, by way of hypothetical example, ‘despite a diligent pre-suit investigation plaintiff has been unable to learn even an approximation of the extent of sales of the accused product and will seek this data in discovery.’ Again, that some material is as yet unknown does not excuse nondisclosure of what is or should be known. Plaintiff is not required to do the impossible but is required to do the best it can. Just because some items cannot yet be disclosed does not mean that nothing should be disclosed. If the Court later determines that the disclosure should have and could have reasonably been more complete, then, to that extent, preclusion or other sanctions may well be required.

Corning, at *4, citing Brandywine Communs. Techs., LLC v. Cisco Sys., 2012 U.S. Dist. LEXIS 162165, 3 (N.D. Cal. Nov. 13, 2012).

The Defendants in the current case propounded an interrogatory for the Plaintiff to state their “theory of damages, apportionment among the Defendants, the method used to calculate damages including without limitation whether the calculation is based on lost profits, reasonable royalty, or some other measure of damages,” and issues of prejudgment interest. Corning, at *5.

The Court held that the Plaintiff’s response to wait for their expert report was “plainly insufficient.” Corning, at *6-7. The Court explained it needed to know what the case was worth in order to resolve discovery disputes. As the Court summed up: “Proportionality is part and parcel of just about every discovery dispute.” Corning, at *7.

The Court cited to Rule 26(e)’s requirement to supplement initial disclosures based on new information learned in the course of discovery. Id. As such, the Court ordered the Plaintiff to supplement its Rule 26(a)(1)(A)(iii) damages-related disclosures by April 30 (16 days from the date of the order). Id. The Plaintiff was also required to answer the Defendant’s interrogatory, including:

The amount of damages Plaintiff seeks under each of its asserted damages theories (including lost profits, reasonable royalty, interest and any other asserted theory); 

Plaintiff’s apportionment of damages between Defendants and each asserted patent; 

For each asserted patent, the time period of which Plaintiff seeks damages as a result of the alleged infringement;

To the extent Plaintiff seeks to recover both lost profits and a reasonable royalty, the theory under which it claims such recovery is appropriate;

The witnesses on which Plaintiff intends to rely to support its damages claim;

The documents on which Plaintiff intends to rely to support its damages claim;

To the extent Plaintiff claims that it lost profits as a result of the alleged infringement, the facts on which Plaintiff bases its claim, including the identity and amount of

Plaintiff’s products on which Plaintiff claims to have lost profits; and

To the extent Plaintiff seeks to recover a reasonable royalty, the facts on which Plaintiff bases its claim, including the date of the hypothetical negotiation, any allegedly comparable licenses, the term of the reasonable royalty sought and any other Georgia-Pacific factors on which Plaintiff intends to rely.

Corning, at *7-8.

Bow Tie Thoughts

Proportionality is the key to resolving discovery disputes. I am not a patent litigator, but it is shocking to have litigation where parties cannot give a basic value of damages. Granted, patent litigation is highly complex and specialized. Moreover, computing complex damages is the territory of experts. However, if a case has multiple powerhouse law firms with teams of lawyers billing away, one would hope damage-related disclosures are made earlier in the case, opposed to later.

Can You Sue for Invasion of Privacy if Someone Reposts an Instagram Photo?

basketball-31353_1280If a basketball player posts a public photo to Instagram, and then another basketball player reposts the photo, can the first basketball player sue for Invasion of Privacy, Intentional Infliction of Emotional Distress, Defamation, and General Negligence?

The answer is yes, you can sue, but you will not survive a motion to dismiss. That is the lesson from Binion v. O’Neal, 2015 U.S. Dist. LEXIS 43456, 1 (E.D. Mich. Apr. 2, 2015).

US District Judge Avern Cohn started this opinion in the most logical place: Instagram’s terms of service. The Court quote Instagram’s FAQ’s and privacy statement as follows:

Instagram is a social media website that describes itself as a “fun and quirky way to share your life with friends through a series of pictures.” (FAQ, Instagram.com, https://instagram.com/about/faq/ (last visited Mar. 5, 2015)) Every Instagram user is advised that “[a]ll photos are public by default which means they are visible to anyone using Instagram or on the instagram.com website.” (Id.) However, Instagram allows users to “make [their] account private” such that “only people who follow [the user] on Instagram will be able to see [their] photos.” (Id.) If the Instagram user fails to make his/her account private, “anyone can subscribe to follow [their] photos.” (Id.)

Instagram‘s privacy policy states that “[b]y using our Service you understand and agree that we are providing a platform for you to post content, including photos, comments and other materials (“User Content”), to the Service and to share User Content publicly. This means that other Users may search for, see, use, or share any of your User Content that you make publicly available through the Service.” (Privacy Policy, Instagram.com, https://instagram.com/about/legal/privacy/ (last visited Mar. 5, 2015)) The privacy policy further states, “[a]ny information or content that you voluntarily disclose for posting to the Service, such as User Content, becomes available to the public, as controlled by any applicable privacy settings that you set. . . . Once you have shared User Content or made it public, that User Content may be re-shared by others.” (Id.)

Binion v. O’Neal, 2015 U.S. Dist. LEXIS 43456, 2-3 (E.D. Mich. Apr. 2, 2015).

The Court reviewed each claim against Defendant Burke. The analysis focused heavily on Instagram’s privacy policies and Michigan law, as case was based in diversity.

The Invasion of Privacy cause of action was based on all four traditional claims: (1) “[i]ntrusion upon the plaintiff’s seclusion or solitude, or into his private affairs”; (2) “[p]ublic disclosure of embarrassing private facts about the plaintiff”; (3) “[p]ublicity which places the plaintiff in a false light in the public eye”; (4) “[a]ppropriation, for the defendant’s advantage, of the plaintiff’s name or likeness.” Binion, at *6.


All of these claims failed. First, the Court found that a publicly posted photo to Instagram by a Plaintiff could not form a claim for “Intrusion upon Seclusion.” Binion, at *7. The Court agreed with the Defendant “that no reasonable person, particularly in the social media age, would find it objectionable to obtain and repost a photograph that someone had already posted publicly.” Id.

The Court also found there was no public disclosure of embarrassing private facts or “false light” claims from reposting a photo that originated from the Plaintiff. Binion, at *7-9. There was also no appropriation, as there was no evidence that reposting the photo of the Plaintiff gave the Defendant any pecuniary benefit. Binion, at *10.

The intentional infliction of emotional distress (IIED) requires a Plaintiff prove “(1) extreme and outrageous conduct; (2) intent or recklessness; (3) causation; and (4) severe emotional distress.” Binion, at *11. Reposting a publicly available photo from social media does not go “beyond all possible bounds of decency” to sustain a claim for IIED. Id.

The Court’s analysis of defamation was interesting. Defamation requires (1) “a false and defamatory statement concerning the plaintiff”; (2) “an unprivileged publication to a third party”; (3) “fault amounting to at least negligence on the part of the publisher”; and (4) “either actionability of the statement irrespective of special harm or the existence of special harm caused by the publication.” Binion, at *12.

The Court focused on the fact there were no statements attributed to the Defendant. The Plaintiff argued that the Defendant’s posting of the photo implied the Plaintiff was mentally handicapped or his appearance made him “worthy of ridicule.” Binion, at *13.

The Court rejected these arguments. There was no evidence that the Defendant had any statements that implied the Plaintiff was mentally handicapped. Moreover, Michigan Courts have held that online statements are “statements of pure opinion, rather than statement or implications of actual, provable fact.” Binion, at *13-14, citing Ghanam v Does, 303 Mich. App. 522, 547 (2014).

The Plaintiff’s general negligence claim also failed, because there was not a legal duty between both basketball players, other than “the general duty to conform to the legal standard of reasonable conduct in the light of the apparent risk.” Binion, at *14. Moreover, the Defendant argued that his relationship with the “Plaintiff is no different than with the millions of other Instagram users who post photographs that can be shared, reposted, and commented on.” Id.

The Court agreed. There is no case law precedent that supports the legal theory that there is a “social media duty” on reposting photos with foreseeable consequences of emotional harm. Id.

Bow Tie Thoughts

The collection of Instagram photos in cases involving online torts is an interesting one. The subject photos can exist in the Instagram App, on a party’s Instagram photo online, and in the Camera Roll of the phone. The “right” image to capture for litigation can turn on the type of case. Many times simply printing the image as a PDF from Instagram.com could be all that is required. Other cases might just require a screen capture of the app on the smartphone. There are situations where collecting the photo from the smartphone is required, such as when GPS metadata is relevant. Whatever the situation, attorneys should consider what is the relevant source of information to preserve.

Are “Read Receipt” Emails Hearsay?

How do you authenticate “Read Receipt” auto-generated emails? Are the messages hearsay?

social-349528_1280This issue was raised by a Defendant who challenged “Read Receipt” emails generated by one of the Defendants after reading an email from the Plaintiff.

The Court rejected the argument that the “Read Receipt” email was unauthenticated hearsay. Fox v. Leland Volunteer Fire/Rescue Dep’t Inc., 2015 U.S. Dist. LEXIS 30583, 31-32 (E.D.N.C. Mar. 10, 2015).

The Court outright questioned whether a “Read Receipt” email was even a statement, which requires that an assertion is intended under Federal Rules of Evidence 801(a). The Court considered that even if an auto-generated “Read Receipt” email was a statement, it would be admissible against the Defendant because the email was created by the Defendant reading (or at least opening) the Plaintiff’s email message. This is an unique way of saying “Read Receipt” emails are party admissions under Federal Rule of Evidence Rule 801(d)(2)(A) and (D), because the message came from the Defendant’s work email for a matter he was supposed to investigate as part of his job function. Fox, at *30-31.

The Defendant argued the “Read Receipt” was not properly authenticated, because the Plaintiff failed to have a technical affidavit explaining how “read receipt” emails are generated for reliability. Fox, at *31.

The Court rejected the argument the Plaintiff needed to explain how Defendant’s auto-generated email was created. While there are times for technical affidavits, this was not one of them according to the Court. The Court explained that since the email was being admitted as a statement of a party opponent, the Court did not require a technical report to ensure the reliability of the email. Fox, at *31, citing Fed. R. Evid. 801(d)(2).

Bow Tie Thoughts

Authentication and hearsay are issues Courts deal with daily over electronically stored information. I am confident this was not the first Court to deal with the issue of “read receipt” emails, but it was the first I have seen.

I would argue the auto-generated message is not hearsay, because there is no statement from a human being. However, one could argue with a straight face such messages are statements, because the data generated from the time it was read and the sending of the message is an assertion of fact. That being said, finding the “read receipt” message was a party admission was a very clever argument.

If You Also Love Evidence 

I have loved Evidence since law school. I am very happy to be doing a webinar with Guidance Software on the Admissibility of Electronically Stored Information on April 8, 2015, with Judge Matthew A. Sciarrino, Jr. of the Kings County Supreme Court, Kathleen F. McConnell, Esq., of Seyfarth Shaw LLP, and Chad McManamy, Esq., Vice President of E-Discovery and Assistant General Counsel for Guidance Software. If you would like to learn more and attend, you can register at here. I am really looking forward to the webinar.


Stating Reality: Imaging a Hard Drive Makes a Copy

Taxation of cost cases do not generally have happy endings for recovering eDiscovery costs. The United States Court of Appeals for the Sixth Circuit issued a very important opinion on March 17, 2015 well grounded in the reality of civil litigation and the law where eDiscovery costs were recovered.

It also takes a swing at Race Tires, which is always a welcome read.


The Court of Appeals held that the cost of video deposition synchronization and transcript were properly taxed. Colosi v. Jones Lang LaSalle Ams., Inc., 2015 U.S. App. LEXIS 4184, 2-3 (6th Cir. Ohio 2015). The Trial Court had determined the synchronized video deposition was “reasonably necessary” and the opposing party never explained how the costs were either unreasonable or unnecessary. Id.

For anyone who has conducted deposition review, this is good news. I have spent many hours reviewing depositions and video depositions. “Reasonably necessary” is an understatement. Synced video depos allow you to understand the context of the testimony. A simple question and answer in a transcript can look harmless, but if the video shows the deponent turning bright red, biting his lip, and answering the question with his teeth clinched, you know that testimony is important.

From Yeslaw.net

From Yeslaw.net

The Court of Appeals further allowed the recovery of costs for imaging a hard drive. The Court stated:

Imaging a hard drive falls squarely within the definition of “copy,” which tellingly lists “image” as a synonym. And the name “imaging” describes the process itself. Imaging creates “an identical copy of the hard drive, including empty sectors.” The image serves as a functional reproduction of the physical storage disk. From the image file, one can access any application file or electronic document on the hard drive with all that document’s original properties and metadata intact. Id. If not actually made or formed in the image of the hard drive, we certainly regard it as such. Thus, a plain reading of the statute authorizes courts to tax the reasonable cost of imaging, provided the image file was necessarily obtained for use in the case.

Colosi, at *6, citing CBT Flint, 737 F.3d at 1328 (quoting The Sedona Conference, The Sedona Conference Glossary: E-Discovery & Digital Information Management 27 (Sherry B. Harris et al. eds., 3d ed. 2010)) and 1329-30.


I think it is extremely significant that the Court held that the imaging a hard drive “making a copy” and falls within the plain meeting of the taxation of costs statute.

The Court further stated that the Race Tires court “ignored § 1920’s text.” Colosi, at *8. The Court explained:

We need not ask whether imaging is the “functional equivalent” of making photocopies in the era before electronic discovery because—consistent with the 2008 amendments—the procedure comes within the ordinary meaning of “making copies of any materials.” While the Third Circuit rightly worried over expanding the scope of § 1920 to include expensive electronic discovery procedures not contemplated by Congress, this concern more appropriately pertains to the context-dependent question of whether the prevailing party necessarily obtained its copies for use in the case.

Colosi, at *8; Taniguchi, 132 S. Ct. at 2002—06 (beginning its interpretation of § 1920 with the ordinary meaning of words before examining statutory context).

The biggest take away from this case is a Court stated a reality of electronic discovery: an image of a hard drive is a copy.

Focus on the Merits to Find What is Relevant, Not Search Terms Alone

Responding to a discovery request marries the practice of law to search technology. Rule 26 Conferences in Federal Court often have parties spending a significant amount of time exchanging “search terms” to determine the most effective discovery protocol for a case.

I think focusing on “search terms” alone is the wrong focus. Parties in a meet and confer should focus on search concepts, such as who are the relevant individuals, date ranges, and core terms. However, the focus should be on how to identify what is relevant to the claims and defenses in a lawsuit and not the minutia of “search terms.”

Mature business male conducting a meeting

Consider the case of In re Lithium Ion Batteries Antitrust Litig. The parties negotiated and developed a search protocol using search terms. The Court summarized the ESI protocol as follows[1]:

  1. The producing/responding party will develop an initial list of proposed search terms and provide those terms to the requesting party;
  2. Within 30 days, the requesting party may propose modifications to the list of terms or provide additional terms (up to 125 additional terms or modifications); and
  3. Upon receipt of any additional terms or modifications, the producing/responding party will evaluate the terms, and
  4. Run all additional/modified terms upon which the parties can agree and review the results of those searches for responsiveness, privilege, and necessary redactions (Proposed Search Term Protocol § B4), or
  5. For those additional/modified terms to which the producing/responding party objects on the basis of overbreadth or identification of a disproportionate number of irrelevant documents, that party will provide the requesting party with certain quantitative metrics and meet and confer to determine whether the parties can agree on modifications to such terms. Among other things, the quantitative metrics include the number of documents returned by a search term and the nature and type of irrelevant documents that the search term returns. In the event the parties are unable to reach agreement regarding additional/modified search terms, the parties may file a joint letter regarding the dispute.

The Plaintiffs recommended if there were disputed search terms after “quantitative metrics evaluation, the parties would then conduct a randomized qualitative sampling.” This would be done by a “random number generator” that would “generate a statistically valid number of ordinal positions of the identified documents,” and the “randomly selected documents can be viewed by the Requesting Party immediately after the appropriate privilege check.”[2]

Nothing left to chance - Business Strategy

The Defendants were not keen on this plan, because the sampling protocol would result in production of irrelevant information.[3]

The Court agreed with the Plaintiff, stating that the “point of random sampling is to eliminate irrelevant documents from the group identified by a computerized search and focus the parties’ search on relevant documents only.”[4]

Judge Donna Ryu explained the Court’s holding on the fact that keywords can be “overinclusive” and can find a large numbers of irrelevant documents in addition to relevant ones. [5] Invoking the Moore v. Publicis Groupe opinion, the Court stated the goal of “quality control test[ing]” is “to assure accuracy in retrieval and elimination of ‘false positives.'”[6] 

The Court pointed out the Plaintiff’s common sense argument: a random sample that shows that a search is returning a high proportion of irrelevant documents is a bad search and needs to be modified to improve its precision in identifying relevant documents.[7]

The Court further stated that the proposed sampling procedure was designed to prevent irrelevant documents from being reviewed and would obviate motion practice over search terms.[8]

The Defendants’ concerns did not fall on deaf ears. The Court explained that the Defendants could remove any irrelevant files from the random qualitative sample for any reason as long as the removed files were replaced with an equal number of randomly generated files.[9]

The Court order became very specific on the following points[10]:

The parties agreed that the procedure for qualitative sampling shall apply only after exhaustion of the quantitative evaluation process.

Irrelevant documents in the sample shall be used only for the purpose of resolving disputes regarding search terms in this action, and for no other purpose in this litigation or in any other litigation; those irrelevant documents, as well as any attorney notes regarding the sample, shall be destroyed within fourteen days of resolution of the search term dispute, with such destruction confirmed in an affidavit by counsel. 

In addition, the court held that access to the random sample shall be limited to one attorney from each law firm designated co-lead class counsel for Direct Purchaser Plaintiffs and Indirect Purchaser Plaintiffs (total of six attorneys).

Plaintiffs could invoke the random sampling process with respect to no more than five search terms per defendant group. 

A defendant family would run one combined search for up to five disputed terms, rather than creating separate samples for each disputed term. The parties were ordered to meet and confer regarding the sample size, as well as the overall limit on the number of sample documents generated per defendant family.

Bow Tie Thoughts 

This search protocol was very specific on sampling. Moreover, it also highlights how complex “search” can be in litigation. However, it also highlights the danger of only using “search terms” in discovery.

“Search terms” are recognized as easily being both over and under inclusive. As such, there is no meet and confer that will ever determine every possible search term. If there were, ESI Protocols would like the Napoleonic Code of Discovery.

The issue with discovery is determining how to find the ESI that is relevant to the claims and defenses of a lawsuit. The first steps include determining the key players in the litigation, the date ranges, how they communicated, and terms of art that they used. The context of communications should go beyond “search terms,” to what are the concepts at issue in the lawsuit so today’s eDiscovery software can truly be used as “technology-assisted review” to help lawyers find responsive ESI.


[1] In re Lithium Ion Batteries Antitrust Litig., 2015 U.S. Dist. LEXIS 22915, 48-49 (N.D. Cal. Feb. 24, 2015).

[2] Id., at *49.

[3] Id., at *55.

[4] Id., at *54.

[5] Id., at 54, citing Moore v. Publicis Groupe, 287 F.R.D. 182, 191 (S.D.N.Y. 2012).

[6] Id., at 54, citing Moore at 191, citing William A. Gross Constr. Assocs., Inc. v. Am. Mfrs. Mut. Ins. Co., 256 F.R.D. 134, 136 (S.D.N.Y. 2009).

[7] Id., at *55.

[8] Id.

[9] Id., at *55.

[10] Id., at 55-56.

Return to the TAR-Pit

Take note all, there is a new predictive coding case by Judge Andrew Peck. The good Judge waded into the TAR-pit of transparency, which in my opinion has caused much unnecessary problems with judges and parties who believe “transparency” is required when predictive coding is used, mandating the disclosure of seed sets. I do not think the Federal Rules of Civil Procedure place such a burden on producing parties by attacking the work-product doctrine or compelling the production of irrelevant information.

Judge Peck summarized that “where the parties do not agree to transparency, the decisions are split and the debate in the discovery literature is robust.” Rio Tinto Plc v. Vale S.A., 2015 U.S. Dist. LEXIS 24996, 8 (S.D.N.Y. Mar. 2, 2015).

Judge Peck’s new opinion did not rule on the issue of seed transparency, because the parties had agreed to an ESI protocol that “disclosed all non-privilege documents in the control sets.” Rio Tinto Plc., at *10. However, Judge Peck provided his thoughts on what I would call a bias against technology-assisted review:

One point must be stressed -it is inappropriate to hold TAR to a higher standard than keywords or manual review. Doing so discourages parties from using TAR for fear of spending more in motion practice than the savings from using TAR for review.

Rio Tinto Plc, at *10, emphasis added.

Business team enjoying victory

That statement is extremely important. There is no valid reason to treat “predictive coding,” or any other form of analytics such as conceptual searching, email threading, or clustering, to higher discovery standards because “technology” is used.

The issue is whether or not the production is adequate. A producing party should not have to disclose attorney work product in analyzing their case or proving the technology functions. Courts do not hold competency hearings on whether an attorney properly knows how to conduct online legal research to ensure attorneys are maintaining their ethical duty of candor to the court. The same logic applies to technology-assisted review and productions.

Judge Peck did state while he generally believed in cooperation, “requesting parties can insure that training and review was done appropriately by other means, such as statistical estimation of recall at the conclusion of the review as well as by whether there are gaps in the production, and quality control review of samples from the documents categorized as now responsive.” Rio Tinto Plc., at *9-10, referencing Grossman & Cormack, Comments, supra, 7 Fed. Cts. L. Rev. at 301-12.

The focus of discovery should be whether or not a production is adequate. Are there production gaps? Is the parent-child relationship maintained between email messages and attachments? Is the producing party conducting quality assurance testing? Is the producing party documenting their efforts?

Judge Peck’s latest opinion will not be the final word on the issue of “transparency.” However, Judge Peck is a well-respected jurist who understands technology-assisted review. His statement that “it is inappropriate to hold TAR to a higher standard than keywords or manual review” is a very welcome one.