Two weeks ago in his speech at the East Texas Judicial Conference, Chief Judge Randall R. Rader of the Federal Circuit Court of Appeals announced approval of An E-Discovery Model Order for patent cases. While not the first model order to hit the scene, this one could have far-reaching implications—not only for patent disputes but for other civil cases in federal and state courts.
As Judge Rader explained (and we all know), e-discovery in the digital age has gotten expensive. It turns out the situation is even worse for intellectual property disputes. One study suggested that this class of cases costs 62% more than the norm. At Catalyst, we host a lot of IP cases, so I don’t doubt those numbers one bit.
To help address this problem, the Advisory Council of the Federal Circuit created a special subcommittee to draft a model order governing e-discovery, which the Advisory Council then unanimously approved. One of the drafters’ goals was to limit the ability of litigants to turn discovery into an “unlimited fishing expedition.” In doing so, however, they may have gone too far. By limiting each party to five search terms per custodian, they have turned the search process into a game of Go Fish. At least that is the way it looks to me.
(For an earlier take on how to keep e-discovery from becoming like a child’s game, see Ralph Losey’s 2009 post, Child’s Game of “Go Fish” is a Poor Model for e-Discovery Search.)
I support efforts to limit discovery costs and agree they have gotten out of hand. However, the purpose of discovery is to help the parties get at the truth. Turning the search process into a game of five questions would not seem to be a step in that direction. To the contrary, it ignores the most basic tenet of effective search–that it must be pursued in an interactive fashion. With the new Model Order, I fear the courts are turning the search part of discovery more of a blind guessing game than a mechanism to find the documents that matter to your case.
What’s Right About the Model Order?
To be sure, there are a lot of good provisions in the Model Order, although I have questions about a few of them . Let me start with these and then turn to my concerns about the search limitations.
The order imposes cost shifting for disproportionate ESI production requests. It goes on to say that a party’s dilatory discovery tactics and, conversely, its efforts to promote efficiency and reduce costs will be considered in cost-shifting decisions. (Model Order Paragraphs 3 and 4.)
This makes sense to me. The party demanding production can best determine that the information being requested outweighs the costs of producing it. However, somebody will have to determine when a discovery request is disproportionate.
General ESI productions will not include metadata other than date and time sent and received and distribution list. (Paragraph 5.)
I have some reservations about this one but generally agree. Outlook includes hundreds of metadata fields that are irrelevant in 99.9% of the cases. However, I am not sure how much this will save. The cost to extract a few fields is about the same as extracting all the fields. Still, it is mostly clutter so I like the idea. Simplicity is good in most cases.
General ESI production requests shall not include email. To obtain email, parties must propound specific email production requests. (Paragraph 6.)
This one surprises me. Email is at the heart of most disputes and ties heavily into prior art investigations. In Qualcomm, email not produced was at the heart of the sanctions hearings. Why is email singled out for special treatment here? I presume it is because of sheer volume.
Email production requests shall be propounded only for specific issues, rather than general discovery of a product or business. (Paragraph 7.)
This should prove interesting. I suspect a good lawyer will find a way to tie those broad email requests to “specific issues” which may render the limitation toothless.
Email production requests shall be phased to occur after the parties have exchanged initial disclosures and basic documentation about the patents, the prior art, the accused instrumentalities, and the relevant finances. (Paragraph 8.)
This is an interesting suggestion. I support efforts to keep discovery focused on key issues and I assume the goal is to keep initial productions to a minimum in the hopes that later email productions won’t be required.
Email production requests shall identify the custodian, search terms, and time frame. (Paragraph 9.)
This makes sense to me but it suggests that the parties will be able to define what search terms will bring back the relevant information. Without looking at the emails themselves, this will be difficult. Why not allow the parties to specify specific parties and review all of their communications during the relevant time frame? The chances of missing key discussions because you didn’t come up with the right search terms seems high to me.
Each requesting party shall limit its email production requests to a total of five custodians per producing party for all such requests. (Paragraph 10.)
When I was trying cases, I loved limits on depositions because they added a new tactical dimension to the game of preparing for trial. In a typical multi-party case, I would start by guessing which people the other parties would seek to depose and then try to maximize my reach by picking the ones that others didn’t pick. It was fun and didn’t really seem to get in the way of our search for justice.
Doing it for an email request seems both similar and different. In a multi-party case, will co-counsel get together and pick five different custodians each just to widen the net? Why impose such a limit? Why not make the parties justify their requests, perhaps setting a presumptive initial limit? Five seems like a small number to me.
The Model Order does say that should a party request email from more than five custodians, it shall bear the costs of the additional production. That sounds good but will doubtless spawn a host of follow-on debates about the reasonableness of the claimed costs.
Under FRE 502(d), the inadvertent production of a privileged document will not be deemed a waiver. Significantly, the party cannot use the inadvertently produced document to challenge the privilege or protection. (Paragraphs 12 and 13.)
This seems like a step in the right direction if it means the courts will take a harder line in waiver. In a number of recent decisions, the courts seem to have ignored the purpose of the recently amended FRE 502 and put counsel through a gauntlet of tests to justify retrieval of the inadvertently produced materials. See my comments on the Mt. Hawley decisions as on example.
In an effort to perhaps strengthen the safe harbor envisioned for FRE 502, the Order goes on to state:
The mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose. (Paragraph 14.)
That will have some interesting consequences but should reduce some of the risk in producing ESI that hasn’t been reviewed multiple times before the production.
What’s Wrong with the Order
Here is my main concern with the Model Order. It states:
Each requesting party shall limit its email production requests to a total of five search terms per custodian per party. (Paragraph 11.)
Five search terms per custodian? For a major IP case? That number sure seems low to me, almost arbitrary. What are they trying to accomplish with this sort of limitation? To narrow down the number of documents produced in the case?
This approach might backfire by encouraging tactics that would broaden rather than narrow the results. If it were me, I would make my five search terms as broad as possible so as to bring back the proverbial kitchen sink. Without any other means to identify and isolate relevant documents, there is no other choice.
The five term restriction is even tougher because of the following additional limitation:
A disjunctive combination of multiple words or phrases (e.g., “computer” or “system”) broadens the search, and thus each word or phrase shall count as a separate search term unless they are variants of the same word.
This is troubling. Search experts routinely use different and varying words to describe a concept or event. They connect them with “or” statements.
Why? Because people use different and varying words when they communicate. Putting aside simple misspellings, search experts know that they have to account for two key concepts in language:
- Polysemy: The fact that a word can have many meanings. “Strike,” for example, might signal a labor event or what happened to Alex Rodriguez in the bottom of the ninth to close the Detroit series.
- Synonymy: The fact that many words can mean the same thing. We may file a case, a lawsuit, a claim, an action, a complaint, a petition and so forth.
Add to this the fact that we live in age of texting and Twitter. People no longer feel the need to use the King’s English. We regularly clip our sentences with shortcuts. “LOL,” “How R U?” and “Gr8” are common in electronic communications.
That is one reason key word searches fail. It is too easy to miss one of the many possible combinations used by your targets. The only remedy is to pepper your searches with as many “or” clauses as possible.
Under the Model Order, that would no longer be allowed. If your first search has five “or” clauses and you can’t convince the court that these are “variants of the same word,” you will be done. One search (an incomplete one at that) and out.
My second problem is that the proposed key word methodology seems flawed and almost backwards. Simple key word searching has been known to be ineffective for decades. Back in 1985, Blair and Maron conducted a study of the effectiveness of key word searches and found they only retrieved 20% of the relevant documents. See David C. Blair & M. E. Maron, An Evaluation of Retrieval Effectiveness for a Full-Text Document-Retrieval System, 28 Com. ACM 289 (1985).
During the TREC programs, researchers found that the key to making searches more effective was to interact with the documents. Some Lessons Learned To Date from the TREC Legal Track (2006-2009) (Feb. 24, 2010). Specifically, the researchers had to sample initial results from key word searches, refine their searches and sample again. Rinse and repeat techniques managed to bring results up to 50% effectiveness, which still isn’t all that good.
The most effective way to use key word searches is to combine them with different techniques. In one study, the author suggested that this approach could bring up the retrieval rate to about 78% of the total number of relevant documents. See: In Search of the Perfect Search.
Five search terms, with no sampling and limited “or” clauses? That doesn’t sound right to me. I think the courts should be going in the other direction. Encourage the parties to work together and sample the document population. Help them frame their searches so that they find the most relevant documents and only the most relevant.
Otherwise, we have let our fear of fishing expeditions convert the process to a game of Go Fish. “Give me all your eights,” counsel demands. “Go fish,” opposing counsel replies.
For what it is worth, there is an “out” clause here. The Model Order states:
Should a party serve email production requests with search terms beyond the limits …, the requesting party shall bear all reasonable costs caused by such additional discovery.
What does this mean? If I want to submit a more effective search I can pay for it? Is this like buying a vowel on Wheel of Fortune? Perhaps it is a disguised cost-shifting mechanism.
The odd thing is this: For most systems, it doesn’t cost any more to run a long search with multiple “or” statements than a single term. After all, this is computer time we are talking about and not human effort. Catalyst allows searches up to 60,000 characters, for example, and that covers a lot more than five terms. Why not allow counsel to build at least five comprehensive searches before looking at cost shifting?
There is also another out. Under the Model Rule, the parties may jointly agree to modify the five-term limit without having to ask the court’s permission. The key is the requirement that the parties “jointly agree.” In my experience, one side always has an interest in being less helpful so reaching agreement may prove difficult in many cases. However, it may be that counsel will simply make expanding the number of searches allowed a standard part of their pretrial scheduling order.
Even with those outs, the default under the Model Rule is to force counsel to choose between games. Wheel of Fortune or Go Fish? These are not my preferred modes for modern e-discovery. It will be interesting to see how the Model Order works out in practice.