This Sidley Update addresses the following recent developments and court decisions involving e-discovery issues:
- a U.S. District Court for the Southern District of New York opinion addressing a defendant’s use of Google Vault to collect Gmail communications and Google Drive documents and finding that the defendant did not need to collect documents hyperlinked in Gmail communications
- a U.S. District Court for the Southern District of California decision requiring a plaintiff to produce metadata showing the file path of documents produced during discovery and addressing the obligation to preserve deleted and ephemeral data
- a U.S. District Court for the District of Kansas ruling that a defendant did not have to re-produce data in Microsoft Excel format that had been produced in PDF format because the defendant ordinarily maintained the data in PDF format and the plaintiff did not show that the data was inaccessible in PDF format
- a U.S. District Court for the Western District of Washington decision granting a motion to compel the re-production in native Microsoft Excel format of sales data originally produced by a defendant in PDF format, because the data was not produced in the form in which the defendant maintained it in the ordinary course of business, nor was it produced in a functionally equivalent format
1. In Nichols v. Noom Inc., No. 20-CV-3677 (LGS) (KHP), 2021 WL 948646 (S.D.N.Y. Mar. 11, 2021), Magistrate Judge Katherine H. Parker denied Plaintiffs’ motion to clarify or reconsider a prior discovery order regarding Defendant’s collection of Google Drive documents and Gmail communications via hyperlink because Plaintiffs failed to demonstrate that their competing proposal for collection of the hyperlinked documents was proportional to the needs of the case. Id. at *5.
During discovery in this class action consumer protection case, the parties negotiated and disagreed on various aspects of an electronically stored information (ESI) protocol that would govern document collection and production. Id. at *2. Among other issues, the parties disagreed on the use of Google Vault to collect one of the defendant’s Gmail communications. From Defendant’s early productions of documents, Plaintiffs had learned that Defendant’s employees tended to hyperlink to internal Google Drive documents in lieu of attaching them. Plaintiffs argued that hyperlinks are akin to attachments and should be produced as part of the document family. Plaintiffs asked Defendant to use MetaSpike’s Forensic Evidence Collector (FEC) to collect the Gmail communications, rather than Google Vault, because Plaintiffs were concerned that Google Vault would not pull Google Drive documents that were hyperlinked in the Gmail communications. As an alternative to FEC, Plaintiffs suggested Defendant “create a program using Google’s application programming interface to extract links from responsive Google Drive documents, retrieve those linked documents, and produce them as attachments.” Id. at 1. Plaintiffs estimated that it would take one or two weeks to write the suggested program to extract the links.
Defendant, by contrast, argued that hyperlinks are not attachments and that it was separately collecting and producing relevant internal documents on Google Drive. Further, Defendant argued that so long as its preferred method of collection was reasonable, Defendant should be able to decide which method to employ. Id. at *2. Defendant’s discovery expert also submitted a declaration stating that the FEC tool is “unworkable” insofar as it “continues to stall, leading to significantly longer processing times,” and that Defendant “would incur roughly $180,000 in costs to collect the hyperlinked documents and produce them, resulting in further delays.”
Additionally, the ESI protocol negotiated by the parties and later entered by the court did not state that hyperlinked documents are part of “family groups.” Id. at *3. At the same time, the protocol did not define “attachments.” In Magistrate Judge Parker’s view, “[i]t [was] clear ... there was no meeting of the minds on whether hyperlinks were attachments,” and when she entered the order cementing the ESI protocol, Magistrate Judge Parker "did not view hyperlinks to be attachments.”
After considering the parties’ arguments, Magistrate Judge Parker held in her original order that Defendant could use Google Vault to collect Gmail communications and Google Drive documents because, in her view, that method of collection was reasonable, and Defendant was best situated to determine its own search and collection methods. Id. at *2. However, with respect to Plaintiffs’ concern about not being able to identify which Google Drive documents in the production corresponded to a particular hyperlink, Magistrate Judge Parker directed that if there were particular key documents containing hyperlinks where Plaintiffs could not locate the hyperlinked documents in the production, Plaintiffs could raise that issue with her. Magistrate Judge Parker later amended that order and held that Plaintiffs could raise the issue with Defendant, and Defendant would be required to provide the document or Bates number. Plaintiffs then filed a letter seeking to “clarify” the court’s previous orders or, in the alternative, seeking reconsideration of those orders. Id. at *1.
As an initial matter, Magistrate Judge Parker disagreed with Plaintiffs’ contention that a hyperlinked document is an attachment. Id. at *4. As she put it, “[w]hen a person creates a document or email with attachments, the person is providing the attachment as a necessary part of the communication. When a person creates a document or email with a hyperlink, the hyperlinked document/information may or may not be necessary to the communication.” “For example, a legal memorandum might have hyperlinks to cases cited therein,” but Magistrate Judge Parker did “not consider the hyperlinked cases to be attachments.” Similarly, a “document might have a hyperlink shortcut to a SharePoint folder. The whole folder would not be an attachment.” Further, Plaintiffs made no showing that they “need to link to or even care about all of the hyperlinked documents.” To the contrary, at this stage of the case, the number of relevant and material hyperlinked documents was “entirely speculative.”
Magistrate Judge Parker also expressed concerns regarding costs and delay. One argument she found compelling was Defendant’s contention that “one email thread may contain multiple hyperlinks to the same document that already was flagged for production.” As Defendant explained, “[t]he same underlying hyperlinked document may be pulled tens if not hundreds of times in some cases,” and “[t]his additional collection would certainly increase the review population and ... complicate de-duplication, delay production, and impose additional costs.” In Magistrate Judge Parker’s view, given the inherent challenges with Plaintiffs’ proposed collection methods and Plaintiffs’ lack of explanation for why they needed to link or care about all of the hyperlinked documents, Plaintiffs did not demonstrate that the value of obtaining the metadata establishing the linkages for all hyperlinked documents was proportional to the needs of the case. Id. at *5.
Magistrate Judge Parker rejected Plaintiffs’ contention that Defendant could write a program to use Google’s Application Programming Interface (API) to extract links to Google Drive documents from other Google Drive documents, emails, and Slack communications. Id. at 4. Although Plaintiffs’ expert suggested that Defendant’s “ediscovery programmers could create such a program within two weeks,” Magistrate Judge Parker stated that Plaintiffs’ expert did not address the time it would take to apply the program, load, and review the documents.
Accordingly, Magistrate Judge Parker concluded that “[t]he process ... [she] already ordered [was] appropriate” because “[i]t [would] allow Plaintiffs to evaluate [Defendant’s] production and, if Plaintiffs determine there is a need for an additional targeted pull or production or clarifying information about a hyperlinked document’s identity or Bates number, Plaintiffs can request it.” And, as the parties reported during a conference, they had already successfully used Magistrate Judge Parker’s procedure.
2. In Javo Beverage Co., Inc. v. California Extraction Ventures, Inc., 2020 WL 2062146 (S.D. Cal. April 29, 2020), Magistrate Judge William V. Gallo granted Defendants’ requests to compel Plaintiff to produce certain filepath information metadata and to modify the parties’ ESI protocol to reflect the parties’ mutual obligation regarding preservation of deleted and ephemeral data that may be relevant to the litigation.
In this patent and trade secret case, the parties were unable to resolve a number of discovery-related disputes pertaining to a previously entered protective order and an ESI protocol despite months of negotiation. Id. at *1. Among other issues, the parties disagreed on (1) whether Plaintiff’s “filepath information is discoverable to any extent” and (2) whether the parties were “obligated to preserve their deleted and ephemeral data and, if so, to what extent.”
On the first issue, Defendants contended that Plaintiff’s “filepath information,” which Magistrate Judge Gallo used as shorthand to describe information indicating the original file path of an electronically stored record as it was maintained in the routine course of business, was discoverable and should be produced in conjunction with Plaintiff’s ESI productions. Id. at *7. Defendants argued that the filepath information was “highly relevant to assessing the claims at issue” and that the parties had “already agreed to produce metadata alongside its relevant ESI, where filepath information is encompassed within that metadata.” Plaintiff, in contrast, had three primary arguments for why the filepath information should not be ruled discoverable: “(1) the filepath information is misleading and thus irrelevant; (2) extracting the original filepath information would be unduly burdensome and costly; and (3) producing the filepath information would leave [Plaintiff] vulnerable to breaches of attorney-client privilege.”
With regard to relevance, Magistrate Judge Gallo concluded that Defendants had met their burden under Rule 26(b)(1) of the Federal Rules of Civil Procedure to establish that the filepath information was relevant, for three reasons. First, Federal Rule of Civil Procedure 34 emphasizes that production of ESI is relevant, and the rule necessarily encompasses the metadata that inherently exists within the ESI because it requires production of ESI “as maintained in the usual course of business.” Id. at *8. Second, the parties agreed to produce ESI with accompanying metadata, which plainly evidenced that Plaintiff also believed that the metadata underlying the ESI “is as relevant as the ESI itself.” Third, the filepath information was directly relevant because as part of its claim, Plaintiff “must prove that it took reasonable measures to maintain the secrecy of its alleged trade secrets.” Id. (internal quotation marks omitted).
Magistrate Judge Gallo further held that Plaintiff failed to adequately rebut the presumption of relevance. In his view, Plaintiff’s “weightiest” objection was that discovering and producing filepath information would be unduly burdensome and costly. But just because locating data may take time and effort does not mean a party should necessarily be relieved of its discovery obligations. Plaintiff “insist[ed] that the filepath information ‘does not exist as metadata and cannot be automatically generated during the collection process.’ ” “Consequently,” Plaintiff argued, “it w[ould] require a manual, document-by-document determination regarding the ‘original’ filepath where a document was stored ‘in the normal course of business.’ ” But, as Magistrate Judge Gallo observed, Plaintiff offered no explanation for why that would be the case. And even accepting Plaintiff’s representations that the filepath information does not presently exist in any of Plaintiff’s ESI, it failed to provide any insight into “monetary cost, man hours, and length of time recovering and producing the filepath information would entail.”
With respect to Plaintiff’s privilege-based objections, Magistrate Judge Gallo was “not persuaded that such objections should stand in the way of Plaintiff producing any relevant and non-privileged filepath information to accompany [Plaintiff’s] relevant ESI productions.” Id. at *9. As is routine in document discovery, Plaintiff could address its privilege concerns by withholding, in good faith, certain filepath information on privilege grounds, raising privilege objections to Defendants, and producing a privilege log identifying the withheld information to be served along with Plaintiff’s productions.
Magistrate Judge Gallo also rejected Plaintiff’s contentions about the filepath information being “misleading and thus irrelevant.” Plaintiff argued that “certain filepath information would be misleading because it would reflect the ESI’s current location rather than where the ESI existed during the relevant time.” Magistrate Judge Gallo held that Plaintiff could assert standard discovery objections reflecting the irrelevance of the information based on the timing but that there was no reason to halt the discovery process on the basis of that particular objection. Accordingly, Magistrate Judge Gallo granted Defendants’ request to compel Plaintiff’s production of its filepath information to the extent it already existed.
With respect to deleted and ephemeral data, Magistrate Judge Gallo observed that the parties were in agreement that “to the extent ephemeral or deleted data is relevant to the claims and defenses at issue here, such data should be preserved.” Id. (emphasis in original). As he explained, “[c]ourts generally agree that deleted, ephemeral, and other similar kinds of data are discoverable, and, necessarily then, subject to the parties’ preservation duty.” Because the parties’ shared position readily aligned with this authority and Magistrate Judge Gallo’s determination that the parties each bore an ongoing duty to preserve ephemeral or deleted data that may be relevant to any extent, Magistrate Judge Gallo granted Defendants’ proposed request that the ESI protocol reflect the parties’ mutual understanding on this issue.
3. In Lundine v. Gates Corporation, No. 18-1235-EFM, 2020 WL 1503514 (D. Kansas March 30, 2020), U.S. Magistrate Judge James P. O’Hara of the District of Kansas found that Defendant did not have to re-produce data in Microsoft Excel format that had been produced in PDF format because Defendant ordinarily maintained the data in PDF format and Plaintiff did not show that the data was inaccessible in PDF format.
In this Fair Labor Standards Act collective litigation, Defendant produced pay data for the members of the class in PDF format, and Plaintiff filed a motion seeking to compel Defendant to produce the data in Excel format so that Plaintiff would not have to manually enter all of the relevant data points into Excel to calculate damages, or, in the alternative, to allow Plaintiff’s experts access to Defendant’s payroll data to download the data themselves. Defendant opposed the motion. 2020 WL 1503514, at *1.
Magistrate Judge O’Hara started his analysis by reviewing the relevant standards under Fed. R. Civ. P. 34, including that “[i]f a request for electronically stored information does not specify the form or forms of production, a responding party must produce the information in a form or forms in which it is ordinarily maintained, or in a form or forms that are reasonably usable.” Id. (quoting Fed. R. Civ. P. 34(b)(2)(E)(ii)). In addition, “a party need not produce the same electronically stored information in more than one form.” Id. (quoting Fed. R. Civ. P. 34(b)(2)(E)(ii)). Magistrate Judge O’Hara noted that as the party objecting to discovery, Defendant had the burden to show facts justifying its objection by demonstrating that the time or expense involved in responding to the requested discovery of ESI was unduly burdensome. Defendant provided an affidavit stating that re-production in Excel format would take an additional 25 hours of employee time and at least $2,500 in attorneys’ fees. Id. at *2.
Magistrate Judge O’Hara stated that, absent agreement, the format of production is within the responding party’s discretion. Here, Defendant maintained the data in PDF format, which meant that PDF was the native format of the data. Magistrate Judge O’Hara rejected Plaintiff’s argument that in other cases involving the same timekeeper software used by the Defendant here, other defendants had produced the data in Excel format. He found that what other employers might do is not relevant because the relevant question is how the Defendant ordinarily keeps its timekeeping data. Magistrate Judge O’Hara also noted that Plaintiff had failed to show that the data was not readily accessible in PDF format, even if PDF was not Plaintiff’s preferred format.
Ultimately, Magistrate Judge O’Hara found that requiring Defendant to re-produce data in Excel format would be duplicative and unduly burdensome. Id. at *3. While he acknowledged that it would take time to convert the PDF pay data into Excel format, the data was still usable in PDF format because it could be manually converted, and re-production of the records in Excel format would not provide any further information than what was already provided in the PDF documents.
Finally, Magistrate Judge O’Hara rejected Plaintiff’s alternative request that Plaintiff’s experts be granted access to Defendant’s timekeeping system, with supervision, to download the data at issue in Excel format. He found that it would unnecessarily burden Defendant to allow access because Defendant would still incur significant time and expense to supervise Plaintiff’s experts and to prevent disclosure of private, unrelated data.
4. In Corker v. Costco Wholesale Corp., No. C19-0290RSL, 2020 WL 1987060 (W.D. Wash. April 27, 2020), U.S. District Judge Robert S. Lasnik of the Western District of Washington granted a motion to compel the re-production in native Microsoft Excel format of sales data originally produced by one defendant in PDF format, because the data was not produced in the form in which the defendant maintained it in the ordinary course of business, nor was it produced in a functionally equivalent format.
In this case involving claims of false designation of origin, false advertising, and unfair competition related to the sale and marketing of Kona coffee, Defendant BBC Assets, LLC, produced its coffee sales data in a 2,269-page document that appeared to be a spreadsheet converted into a static PDF, with significant redactions obscuring sales information regarding non-Kona brands. Plaintiffs filed a motion to compel production of the original spreadsheet as kept in the ordinary course of business and without redactions. Defendant opposed the motion. 2020 WL 1987060, at *1.
Judge Lasnik began his analysis by quoting Fed. R. Civ. P. 34(b)(2)(E)(ii): “u nless otherwise stipulated or ordered by the court ... a party must produce ESI in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms.” He further referenced the advisory committee’s comments to the 2006 amendment to this rule, which stated that “the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is ordinarily maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation.”
Judge Lasnik found that Defendant’s initial production in PDF format was plainly insufficient under the rule because even if the PDF images of the spreadsheet pages were “readable” and “searchable,” they could not be sorted or filtered as the original spreadsheet could have been. Therefore, the PDF data was not in a “reasonably usable form” as required by Rule 34(b)(2)(E).
Judge Lasnik also addressed an alternative proposed by Defendant to produce a report in Excel format that contained all of the relevant information responsive to Plaintiffs’ discovery request while filtering/hiding irrelevant and commercially sensitive information regarding non-Kona brands and sales. Id. at *2. He noted the general rule in discovery that a party is not permitted to redact material from responsive documents based on a unilateral assessment of relevance, but he also acknowledged that the applicability of this general rule to Excel workbooks and other potentially expansive databases has not been fully explored. Judge Lasnik pointed out that Excel files often contain “vast quantities of information,” and he referred to one case involving multivolume manuals or large documents that held that “if entire sections are clearly and convincingly irrelevant, they may be redacted.” Id. (quoting Evon v. Law Offices of Sidney Mickell, 2010 WL 455476, at *2 (E.D. Cal. Feb. 3, 2010)).
Here, Judge Lasnik ultimately did not decide the issue of redaction on relevance grounds because he found that Defendant’s request to redact information could be granted on other grounds, namely that the information related to non-Kona brands was “highly confidential and its disclosure in this litigation would put it at a competitive disadvantage.”
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