‘Two Model Rules from the E-discovery-Kings under the sky:
Five or eight custodians for Tech-Lords in their courts of stone;
The vast production of metadata, perhaps doomed to die;
Five or ten search terms for the Dark Lord’s e-mail on his dark throne
In the Land of Litigants where the patent Trolls lie.
Is there One Ring to rule them all? One Ring to find them?
One Ring to search them all and then produce and bind them,
In the Land of Litigants where patent cases lie?’
“It’s a dangerous business, Frodo, going out of your door . . . You step into the Road, and if you don’t keep your feet, there is no knowing where you might be swept off to.”
— J.R.R. Tolkien, Lord of the Rings: The Fellowship of the Ring
At some point along the winding road of litigation and technology, electronic discovery’s (“e-discovery”) All-Seeing Eye grew bigger than its stomach. The ugly truth is that only .0074% of documents requested and produced in litigation (less than 1 in 10,000) wind up on trial exhibit lists. Still less are actually used. The proportion is even lower for e-mail, which is requested ad nauseam in the hopes of finding a hastily-written smoking gun. In intellectual property litigation in particular, companies can spend tens or hundreds of thousands of dollars producing their own mountain range of documents, and having their counsel wander through the other side’s . . . all for a molehill of useful material.
To combat this trend, two sets of courts — let’s call them the Fellowship of the E-Discovery Kings — recently set on journeys to narrow the range of the All-Seeing Eye in patent litigation, issuing helpful Model Orders for e-discovery. But whether there is really One Ring to Rule Them All when it comes to search methodologies — one workable solution — may not be as clear as the E-Discovery Kings propose.
“Advice is a dangerous gift, even from the wise to the wise, and all courses may run ill.”
— J.R.R. Tolkien, Lord of the Rings: The Fellowship of the Ring
First, in November 2011, the Advisory Council of the Federal Circuit promulgated a model rule for patent cases “to streamline e-discovery, particularly email production.” This Model Order’s provisions (a) exclude e-mail from general production requests for ESI, requiring parties to serve requests seeking email production on specific issues; (b) limit to five, both the number of custodians whose email must be searched and the number of search terms that can be used; (c) preclude production of all but limited metadata absent good cause; and (d) require that a party serving broader discovery bear all reasonable costs. Courts have already adopted at least parts of the Model Order, applying it not just to “patent troll” cases but competitor-based patent litigation as well. See, e.g., DCG Sys., Inc. v. Checkpoint Techs., LLC, 2011 WL 5244356 (N.D. Cal. Nov. 2, 2011); Effectively Illuminated Pathways v. Aston Martin, No. 6:11-cv-00034 (E.D. Tex., Oct. 20, 2011).
Second, in February 2012 the Eastern District of Texas, a popular patent litigation venue (and the dwelling of many patent trolls), followed up with a Model Order that (a) permits requesting e-mail from eight custodians; (b) doubles the search terms to ten; and (c) does not contain flexibility for additional discovery or its cost-shifting provisions for adding more custodians or search terms, but allows expanding discovery for less than “good cause.” Other provisions include requiring the parties to exchange the identities of the fifteen most significant email custodians, and providing guidance on the format of ESI production — for example excusing parties from preserving and collecting data from voicemails, PDAs and mobile phones, absent good cause.
“Short cuts make long delays.”
— J.R.R. Tolkien, Lord of the Rings: Fellowship of the Rings
However, a major presumption underlying both Model Orders is that key-word search terms are the One Ring to Rule Them All: the optimal and only search methodology. In truth, key-word searching may become the hard-copy paper document review in today’s electronically-favored process — outmoded and outdated. As such, propounding keyword search as the gold standard may elevate process over substance, expediency over efficacy.
For example, results returned from a simple key-word search can be over-inclusive, returning a googol of “hits” to wade through, many of which have nothing to do with the core issues. Or under-inclusive, returning very few hits due to a party’s internal use of code words (i.e., “Operation Rivendell” for references to a particular patent). Or perhaps the propounding party simply failed to guess “precious” catchphrases that would uncover what a party conceals in its e-pocket. Ralph Losey, in his popular e-Discovery Team blog, has referred to keyword searching as similar to a child’s game of Go Fish, in which both players try to guess the other side’s cards while attempting to conceal their own. Finally, even obvious terms can be overlooked in simple keyword searches: in Wingnut Films v. Katja Motion Pictures Corp., No. 05-1516-RSWL, 2007 U.S. Dist. LEXIS 72953 (C.D. Cal. 2007), for example, a litigation surrounding the Lord of the Rings movies, the target of a discovery request was admonished for having failed to search its own servers for the simple phrase ‘Lord of the Rings’!
Another important fallacy of keyword searching is that the context — the individual(s) who sent and received the message, the timing, and its location on the system – is beginning to matter more than specific names and words. Keyword searches alone will fail as an All-Seeing Eye: it will miss many of these ‘nameless’ features.
What, then, is the One Ring to Rule Them All, which can capture both the named and the nameless? And is there even one? Part II of this article will explore one emerging possibility — predictive coding — and questions whether it provides a solution to the current e-mountains of intellectual property litigation.