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Use of Model Order Doesn’t Avoid Discovery Disputes – eDiscovery Trends

In MediaTek, Inc. v. Freescale Semiconductor, Inc. (N.D. Cal. Aug. 28, 2013), when the parties could not agree on search terms, California Magistrate Judge Jacqueline Scott Corley ordered one party to run test searches before lodging objections and required both parties to meet and confer before approaching the court with further discovery disputes.

The parties in this patent infringement matter “took steps to rein in” the exorbitant expenses of e-discovery in patent litigation by adopting the Federal Circuit’s Model E-Discovery Order. The parties proposed, and the district court approved, limitations on discovery. In addition to other limitations on interrogatories and depositions, they also agreed to limits on e-mail production. Specifically, they agreed that “production would be phased to occur after basic document production, that such production would be limited to seven custodians per producing party, and that each requesting party would ‘limit its email production requests to include no more than fifteen (15) search terms per producing party for all such requests, with no more than seven (7) search terms used to search the email of any one custodian.’”

However, as the court noted, the “parties’ laudable efforts at controlling discovery costs . . . imploded.” As discovery closed, the plaintiff filed 10 joint discovery letters seeking additional discovery from the defendant; simultaneously, the defendant filed a non-joint letter to “‘preserve its right to discover [] withheld documents.’”

MediaTek asked the court to order Freescale to produce the e-mail of seven custodians based on 15 search terms and “further identified the 7 search terms to be applied to each custodian’s email as required by the stipulated ESI Discovery Order.” Freescale objected and refused to run any searches.

The court addressed certain search terms, ruling as follows:

“The search terms which are variants of the word “United States,” including “domestic,” are considered one search term. The terms”*mcf* OR *mx* OR *mpc* OR *ppc* OR *pcf* OR *sc*” are not variants of the same word; instead, each term applies to a different accused product. Accordingly, each is a separate search term. The same is true for *845* OR *331* etc.; each refers to a different patent, not a variant of the same word. Thus, for example, MediaTek’s first proposed search term (Dkt. No. 133-1 at 3) is actually six search terms.”

The judge ruled the remaining objections to search terms and date ranges premature. Although Freescale claimed the terms were overly broad, it had “not run a test search on a single identified custodian for any of the proposed searches.” If it were to do so, it might learn “that the searches will not return a disproportionately burdensome number of hits.” If, on the other hand, they returned too many irrelevant documents, then the parties needed to work together to narrow the requests.

Therefore, the court ordered MediaTek to provide amended search requests and for Freescale to run test searches before asserting that any request was too broad. If Freescale did find the requests objectionable, the parties had to “meet and confer in person.” As the court noted, the “[t]he process is designed to be collaborative, something that has not occurred up to this point.”

So, what do you think?  Should courts require producing parties to test searches before declaring them overly broad?   Please share any comments you might have or if you’d like to know more about a particular topic.

Case Summary Source: Applied Discovery (free subscription required).  For eDiscovery news and best practices, check out the Applied Discovery Blog here.

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