Depositions Instead of Searching for Responsive Email?

Proportionality analysis can yield surprising results. In a case involving the alleged breach of a patent license agreement over test cups used to screen urine for illegal drugs, the plaintiff sought email from two custodians knowledgeable of the Defendant’s marketing/sales and design/use of test cups. Rembrandt Diagnostics, LP v. Innovacon, Inc., 2017 U.S. Dist. LEXIS 164015, at *2-3; 16-18 (S.D. Cal. Oct. 3, 2017). 

The Defendant objected to the requests for production of the email from the two custodians, claiming the requests were overbroad, disproportionate, and the seven search terms would not likely yield responsive ESI for marketing or development information from the custodians. Rembrandt, at *16-17. The search terms provided by the Plaintiff included Syntron; Tydings; Assurance and Biotech; 6,548,019; 019; and QuikScreen. Rembrandt, at *17.

The two custodians purportedly had over one million emails, that were 300 gigabytes of data, which would cost $30,000 to export, search, and review. Id.

The Defendants further argued at oral argument that the design files had been produced, thus emails on design did not need to be produced. Rembrandt, at *17.

The Court agreed with the Defendant that the emails were disproportionate and that the necessary information could be identified from the Defendants at deposition. Id.

Bow Tie Thoughts

These types of proportionality arguments leave me with more questions. The record does not say what steps were taken to do any data reduction from the “one million emails.” Was this every email ever sent and received by the custodians? Did that include duplicates? Were those all unique emails? What were the date ranges? Was there anything done to narrow the scope of the requested ESI? Did anyone ask the knowledgable custodians to identify responsive emails?

The implication from the seven search terms is that there was very little nuisance applied to searching for responsive email, besides searching for each individual keyword. While this might not have been the case, it seems like it from the context of the opinion. One option for the requesting party is to draft more specific requests for production, that identify email sent between specific individuals, or within certain date ranges, or from the custodian and a specific domain name, with the identified keywords, in order to have a more narrowly tailored request for production. If using a review application with predictive coding, the application would learn from the reviewers what is potentially relevant, thus enabling them to conduct more focused document review.

Perhaps propounding “early” discovery under Federal Rules of Civil Procedure Rules 26(d)(2) and 34(b)(2)(A) for very specific information could be a strategy in cases like this one. The purpose of the early requests is to get a limited amount of ESI that could be used to develop more specific requests for production. It is also a good shot across the bow of a party that rather litigate away eDiscovery instead of responding to discovery requests. If that fails, make sure the deposition notice includes video and have pointed questions ready to go.

Josh Gilliland is a California attorney who focuses his practice on eDiscovery. Josh is the co-creator of The Legal Geeks, which has made the ABA Journal Top Blawg 100 Blawg from 2013 to 2016 and was nominated for Best Podcast for the 2015 Geekie Awards. Josh has presented at legal conferences and comic book conventions across the United States. He also ties a mean bow tie.