This Sidley Update addresses the following recent developments and court decisions involving e-discovery issues:
- a U.S. District Court for the District of New Jersey opinion finding that defendants’ use of technology assisted review (TAR) without disclosure violated the court-entered electronically stored information (ESI) protocol requiring the parties to meet and confer and cooperate in good faith and ordering defendants to take additional steps based on the violation
- a U.S. District Court for the Southern District of Ohio decision granting in part the plaintiff’s motion to direct the defendants to submit electronic devices for forensic inspection
- a U.S. District Court for the District of Minnesota ordering the plaintiff to produce documents attached to an email that was protected by the attorney-client privilege, even though the privilege extended to the attachments, because the privilege extended only to the copies of the documents actually attached to the privileged email and not to other copies of those documents
- a U.S. District Court for the Central District of California ruling denying the plaintiff’s motion to compel production of documents where the defendants had the practical ability but not the legal right to obtain the documents at issue, and therefore the documents were not in the “possession, custody, or control of the defendants”
1. In In re Valsartan, Losartan, & Irbesartan Prod. Liab. Litig., No. CV 19-2875 (RBK/JS), 2020 WL 7054284 (D.N.J. Dec. 2, 2020), U.S. Magistrate Judge Joel Schneider of the District of New Jersey found that defendants violated the court-entered ESI protocol requiring the parties to meet and confer and cooperate in good faith regarding the use of TAR. But rather than require defendants to manually review 200,000 likely not-responsive documents, Magistrate Judge Schneider ordered that defendants abide by the terms of a previously negotiated but unexecuted TAR protocol and required defendants to accept two provisions in the protocol that they had rejected during the negotiations.
In this products liability multidistrict litigation, plaintiffs alleged that a drug manufactured by defendants was contaminated with cancer-causing chemicals. Id. *1. Despite lengthy negotiations regarding the discovery process, defendants decided to unilaterally implement TAR to guide its review of documents and initially did not disclose the use to plaintiffs. Id. at *2–*3. The defendants’ TAR model indicated that over 200,000 documents “hitting” on the negotiated search terms were nonresponsive. Id. at *4. Defendants ultimately told plaintiffs that they would not review those documents. In the face of plaintiffs’ objections, defendants filed the instant motion requesting that the court foreclose additional review of those documents or, in the alternative, shift the costs of review to plaintiffs. Id. at *1.
At the beginning of the discovery process, the parties entered into an ESI protocol that required them to “cooperate in good faith regarding the disclosure and formulation of appropriate search methodology, search terms and protocols, and any TAR/predictive coding prior to using any such technology.” Id. at *2. After months of negotiations, the parties agreed on a set of search terms and custodians. Two weeks prior to defendants’ first production, defendants informed plaintiffs that they intended to use “a continuous multi-modal learning (‘CMML’) platform to assist” with ESI review. Id at *3. Defendants also indicated that they might use the CMML system to identify documents unlikely to be responsive and not review those documents. After this disclosure, the parties engaged in negotiations to establish a CMML protocol but did not reach agreement because defendants refused to agree to the entry of a court order memorializing the CMML protocol and defendants would not permit plaintiffs to review 5,000 documents identified by the CMML platform as not responsive. Id. at *4.
Following the failed CMML negotiations, defendants undertook an effort to self-validate its electronic review but again did not tell plaintiffs this was done until shortly before the defendants’ motion was filed. Defendants claimed that from a sample of 15,000 documents identified as not responsive by the CMML model, only 109 were deemed responsive after a quality control review. Defendants argued that they should not be required to review documents identified as likely not responsive by their CMML.
Magistrate Judge Schneider began his analysis by identifying a number of issues that he did not have to decide. He did not have to decide “if TAR is an appropriate discovery tool” or “if there are instances when a party may layer a document production with search terms and TAR.” He noted that “[a]mple case law exists to support [defendants’] position that in appropriate instances layering may be done.” Finally, he noted that he did not have to decide if plaintiffs could dictate to defendants the manner in which defendants must review and produce their ESI. He agreed “with the line of cases that holds that a producing party has the right in the first instance to decide how it will produce its documents.” Id. at *5–*6. On the last point, however, Magistrate Judge Schneider noted that the general principle that a producing party has the right to decide how it will produce its documents “is trumped by the requirements in an agreed upon ESI Protocol memorialized in a Court Order.” Id. at *6. He noted that if the ESI protocol was violated, “the Court’s task is to decide the relief to be granted, not to do a proportionality analysis under Fed. R. Civ. P. 26(b)(1).” He explained that “if the Court addressed [defendants’] proportionality argument and ignored the Protocol, it may incentivize parties to skirt the requirements in a Court Order.”
Magistrate Judge Schneider held that defendants violated the requirement in the ESI protocol by failing to timely notify plaintiffs of their use or possible use of TAR. He noted that the protocol required “the parties to ‘meet and confer as early as possible’ regarding TAR/predictive coding.” This meant that defendants were required to “timely disclose its use or possible use of TAR when [defendants] objectively knew or reasonably should have known that [they] might use TAR to reduce the universe of documents to review.” Magistrate Judge Schneider noted that use of TAR was foreseeable well before the defendants’ disclosure given “the stakes in the case, the volume of ESI likely to be requested, and the fact [defendants were] consulting with TAR specialists” during the search term negotiations. Id. at *7.
Magistrate Judge Schneider also held that defendants failed to comply with their “meet and confer obligation” because they did not cooperate regarding the disclosure and formulation of their CMML platform, which was adopted without any input or knowledge of plaintiffs. Nor did defendants meet and confer “as early as possible with Plaintiffs since Defendants proposed to use a TAR that they did not notify Plaintiffs about until their mind was already made up.” Id. (cleaned up).
Magistrate Judge Schneider was unimpressed with defendants’ argument that they employed a similar TAR protocol to one used in a different multidistrict litigation. He explained that the effectiveness of the TAR protocol was not at issue. Rather, the issue was what the ESI protocol required and what defendants’ failed to do. Further, Magistrate Judge Schneider noted that the parties in the other multidistrict litigation did not “undertake months of negotiations and argument over search terms with no inkling that TAR would be proposed for use.”
Nor did Magistrate Judge Schneider credit defendants’ argument that they cooperated in good faith with plaintiffs regarding TAR usage. Id. at *10. Defendants argued that by stating during the ESI protocol negotiations that they were still evaluating the use of TAR, defendants had reserved the right to implement TAR. Magistrate Judge Schneider did not find such a “reservation” sufficient to demonstrate good faith. Additionally, defendants argued that they had proceeded in good faith since, at the time of the negotiations of search terms, they had not decided to use TAR. Magistrate Judge Schneider also found this unpersuasive, explaining that even if defendants had not decided to use TAR during the ESI negotiations, they “should have foreseen [during negotiations] that this would or was objectively reasonably likely to occur.” Because TAR usage was likely, “[i]t was inappropriate for [defendants] to involve plaintiffs and the Court in intensive search term negotiations and disputes without also disclosing there was a reasonable prospect TAR would be used to winnow its documents to be reviewed.”
Having denied defendants’ motion, Magistrate Judge Schneider turned to the issue of how to proceed given the over 200,000 likely not responsive documents at issue. He noted that “contrary to [defendants’] argument ... a court may order alleged non-responsive documents to be produced without a manual review first being done by the producing party.” Magistrate Judge Schneider held that because he found that defendants violated the ESI protocol, he had “wide discretion to fashion an equitable remedy.” Id. at *13. He expressed that having one of the parties “spend millions of dollars to manually review irrelevant or marginally relevant documents is more than mildly disturbing.” The equitable solution, Magistrate Judge Schneider held, was to permit defendants to conduct a TAR review of the likely nonresponsive documents but to require defendants to do so using the protocol previously negotiated by the parties. He also ordered that the protocol include the two provisions defendants had objected to — court entry of the protocol and validation of the not-responsive set by plaintiffs. In so holding, Magistrate Judge Schneider noted that defendants’ “insistence that it is unheard of for alleged non-responsive or irrelevant documents to be produced either by court order or by agreement is not correct.”
2. In Delta T, LLC v. Williams, 337 F.R.D. 395 (S.D. Ohio Jan. 12, 2021), District Judge Matthew W. McFarland granted in part and denied in part Plaintiff’s motion to direct Defendants to submit electronic devices for forensic inspection. Id. at *1.
Plaintiff, a designer and seller of residential and commercial ceiling fans, sued the former highest-ranking officer of its Singapore-based subsidiary and a company the officer started after leaving plaintiff, alleging breaches of fiduciary, contractual, and other duties. The parties conducted limited expedited discovery, which included the deposition of the individual defendant and at least two rounds of interrogatories and requests for production. Defendants objected to some of plaintiff’s discovery requests, and, after the parties tried unsuccessfully to resolve their disagreements, Plaintiff filed a motion seeking, among other things, to “submit [defendants’] electronic devices to a limited forensic inspection, along with relevant information from their mobile phone and internet providers.” Id. at *2.
Plaintiff proposed a protocol for a limited third-party forensic inspection of defendants’ electronic devices: “(1) an independent forensic examiner, either agreed upon by the parties or appointed by the Court, would perform the examination of the devices; (2) the search would be limited to specific search terms designed solely to generate communications between Defendants and former [ ] employees [of Plaintiff’s Singapore-based subsidiary] and between Defendants and commercial parties involved in the fan business; and (3) the examiner would first provide the documents generated by the search to Defendants’ counsel, who may review it before producing it to [Plaintiff’s] counsel and assert legitimate objections, presenting to this Court with a copy of the objected-to document for an in camera inspection.” Id. at 4. Defendants rejected plaintiff’s proposal, arguing that there was “no good cause for such invasive tactics.”
Judge McFarland began his analysis by summarizing the Sixth Circuit’s guidance for district courts determining whether to compel forensic imaging. Id. (citing John B. v. Goetz, 531 F.3d 448 (6th Cir. 2008)). “First, courts should tread lightly before compelling mirror imaging in computers when the request is ‘extremely broad in nature’ and the connection between the devices and the legal claims is unduly vague and unsubstantiated. … Second, mere skepticism that an opposing party has not produced all the relevant material does not justify ‘drastic electronic discovery measures.’ … [T]hird, even if forensic imaging is acceptable in a given case, a district court must still consider the significant interests at stake before ordering such a procedure.”
Applying this guidance, Judge McFarland concluded that forensic imaging was appropriate in this case for three reasons. Id. at *5. First, plaintiff’s proposed search was “tailored and constrained” because it would “generate relevant discovery and prevent the production of privileged material,” and it made financial sense because it might “help the parties avoid the front-end expense of manually reviewing documents for privilege.” Id. at *5-6. However, Judge McFarland declined plaintiff’s additional request, related to scope, for an order requiring defendants to ask “their mobile phone and internet carriers to provide the independent forensic examiner with access to the stored records of Defendants’ communications, to search them under the same limited protocol.” Id. at *6. Plaintiff’s basis for this request was the individual defendant’s deposition testimony that he no longer had access to WhatsApp or one or two laptops. But Judge McFarland concluded that plaintiff’s “single sentence in support of its request, with no legal citation” was insufficient to show that the request was proper under Fed. R. Civ. P. 26(b)(1).
Judge McFarland further found, based on evidence presented by plaintiff from its independent efforts and defendants’ representations during discovery, that defendants had discoverable information they had not yet produced. Id. at *6-7. Third, “the utility and necessity of forensic imaging here outweigh[ed] the privacy and confidentiality concerns inherent in such imaging.” Id. at *7. He noted that plaintiff on the one hand had an interest, and a right under Rule 26, in obtaining relevant information, while defendants, on the other hand, failed to produce certain relevant discovery and “failed to explain why, or why doing so would cause a burden” that would exceed its benefit.
3. In Willis Elec. Co. v. Polygroup Trading Ltd., No. 15-CV-3443-WMW-KMM, 2021 WL 568454, at *1 (D. Minn. Feb. 16, 2021), U.S. Magistrate Judge Katherine Mendez of the District of Minnesota found that the fact of the attachment of photos and videos to a privileged email was itself privileged, but, in light of the circumstances of the case, ordered that the photos and videos be produced.
In this patent infringement litigation, plaintiff “allege[d] that it holds patents for several innovations in the design and construction of pre-lit artificial-trees and that [defendants] infringe[d] [plaintiff’s] patent rights through the sale of its own artificial trees.” Id. *1. In the course of discovery, plaintiff produced an email sent from plaintiff’s employee to plaintiff’s general manager. The email did not reference legal advice but appeared to be addressed to plaintiff’s patent counsel rather than the general manager. Plaintiff later sought to clawback the email and attached photos and videos. Id. at *3. Defendants filed a motion seeking to compel production of the email and attachments. Id. at * 1.
Magistrate Judge Mendez first determined that the email sent to plaintiff’s manager was privileged. While the email was not sent to counsel, Magistrate Judge Mendez accepted that the email was addressed to and intended for patent counsel. Id. at *5. She concluded that the email was “most likely a draft communication that was later sent to [counsel].”
After concluding that the email was privileged, Magistrate Judge Mendez turned to whether the attachments were privileged. The attorney-client privilege protects only the “disclosure of communications, ... it does not protect disclosure of underlying facts.” Id. at*6 (citing Upjohn Co. v. U.S., 449 U.S. 383, 395 (1981)). Magistrate Judge Mendez highlighted that “lower courts have differed with respect to how Upjohn’s holding applies to email attachments. ... [L]ower courts have not always been clear about what protection — if any — applies to such attachments. … A large set of lower courts have interpreted Upjohn to mean that even though the underlying content of the independently discoverable attachments is not privileged, the act of sending the attachments is privileged. … Another group of lower courts do not extend the privilege to independently discoverable email attachments. According to these cases, for the attorney-client privilege to apply to attachments, each attachment must qualify for the privilege.” Id. at *7.
Magistrate Judge Mendez joined the courts finding that the act of sending attachments can be privileged. She pointed out that the privilege does not shield the contents of attachments but rather “protect[s] a party from having to disclose that those specific documents were sent to counsel in connection with a request for legal advice. … [R]equiring disclosure of the attachments themselves creates a risk that an opponent may reverse engineer the substance of a client’s request for legal advice. … The privilege, however, extends only to the copies of the documents actually attached to an email. It does not cover identical documents that are not attached to privileged emails.
Despite finding that attachments can be privileged, Magistrate Judge Mendez ordered that plaintiff produce the photos and videos at issue. She explained that “[i]f this were an ordinary case, [defendants’] discovery requests that seek production of the photos and video files would have led to the production of the photos and videos that were attached to the ... email as independent documents located elsewhere in [plaintiff’s] repository of electronically stored information.” Id. at *8. Magistrate Judge Mendez ordered that plaintiff conduct a reasonable search to determine whether a version of the photos and videos exists that are not attached to a privileged email. She further ordered that if plaintiff did not locate other versions of the photos and videos, plaintiff would be required to produce the photos and videos attached to the privileged email.
4. In Robinson v. Moskus, 2020 WL 5939774 (C.D. Ill. Oct. 1, 2020), Magistrate Judge Jonathan E. Hawley denied a plaintiff’s motion to compel production of documents where the documents at issue were not in the possession, custody, or control of the defendants, as defined in Fed. R. Civ. P. 34(a)(1). Id. at *1.
Plaintiff, a former inmate in the Illinois Department of Correction’s (IDOC) Decatur Correctional Facility, brought a § 1983 action against defendants, including the warden, the jail food service manager, and the internal affairs investigator, alleging that the food services manager sexually harassed and assaulted her. During discovery, plaintiff served several requests for production of documents related to, among other things, previous instances of sexual harassment or assault at the Decatur Correctional Facility. Defendants lodged numerous objections and, after the parties attempted unsuccessfully to resolve their disagreements, plaintiff was granted leave to file a motion to compel.
The primary issue in dispute was whether the documents plaintiff requested were in the defendants’ possession, custody, or control as defined by Federal Rule of Civil Procedure 34(a)(1). According to plaintiff, “the relationship between the Defendants and the IDOC is such that they can obtain all documents in the possession of the IDOC.” Id. at *2. Specifically, because “the interests of the IDOC and these Defendants [were] completely aligned,’ the documents in possession of the IDOC [were] within the ‘possession, custody, or control’ of the Defendants.” In support of her position, plaintiff relied on the facts that (1) defendants were being provided legal representation in this case by the State of Illinois pursuant to Illinois statute, (2) the Attorney General of Illinois was providing their legal defense, and (3) Illinois would indemnify the defendants if they lost. Defendants, by contrast, argued that because the documents plaintiff requested were in the physical possession of the IDOC, and to produce them defendants would first need to obtain them from the IDOC, plaintiff should seek these documents via a third-party subpoena. Id. at *1.
Magistrate Judge Hawley began by explaining that in considering “whether a party has possession, custody, or control of a document in the hands of a third-party” and “[w]here a party and non-party are not corporate affiliates,” courts should inquire “whether the party has a legal right to control or obtain the documents requested; a party’s practical ability to obtain documents is irrelevant absent a legal right to do so.” Id. at *5 (internal quotation marks omitted). Here, Magistrate Judge Hawley concluded, while defendants unquestionably had the practical ability to obtain the requested documents from the IDOC, plaintiff failed to establish that the defendants had any “legal right to control or obtain” the requested documents. Id. (internal quotation marks omitted). Specifically, the Magistrate Judge stated, “nothing in the statute cited by [plaintiff] confers a right upon an IDOC employee to demand documents from the IDOC.” Further, while the Attorney General represented the defendants and would also represent the IDOC if it challenged a third-party subpoena seeking the same documents, “a party who has the same counsel as a non-party does not have the legal right to control or obtain documents from that third-party.” Accordingly, Magistrate Judge Hawley ruled that because the requested documents were not in defendants’ possession, custody, or control, they could not be compelled to produce those documents. Id. at *6.
In concluding his opinion, Magistrate Judge Hawley recognized that “the consequences of this Order may have a significant impact on the manner in which litigation against IDOC employees must be conducted.” While in the past it was common practice for plaintiffs in prisoner litigation to request documents from defendants even if they were in the possession, custody, or control of IDOC, and IDOC typically provided documents upon request to defendants’ counsel, because the Attorney General seemingly had abandoned this practice, the Magistrate Judge stated that plaintiffs in these cases must now subpoena IDOC directly under Fed. R. Civ. P. 45. Id. at *7. In the Magistrate Judge’s view, this new procedure, specifically contemplated under the Federal Rules of Civil Procedure, was preferable to the previous “informal procedure” as IDOC would now be unquestionably subject to the court’s contempt power under Rule 45(g) if it ever failed to comply with a subpoena. Under the previous procedure, by contrast, it was unclear whether the IDOC, as a nonparty, would be subject to any sanctions or potential remedies for false representations it made to a party’s counsel regarding, for example, the completeness of its search and production.
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