Episode 104: Why Understanding How the Discovery of ESI Works is Crucial

Welcome to episode 104 of ACEDS Case of the Week, analyzing SinglePoint Direct Solar LLC v. Solar Integrated Roofing Corp, a trade secrets case with key eDiscovery takeaways. Judge James Teilborg’s decision from March 21, 2023, addresses cost recovery, general objections, ESI protocol, proportionality, and search terms. At issue is the scope of agreed search terms and whether the responsive hits on those terms are too numerous to review and produce. We’ll examine the Court’s analysis and provide crucial insights for eDiscovery practitioners facing similar challenges.

Introduction

Welcome to this week’s episode of our Case of the Week series, published in partnership with ACEDS. This week marks our 104th episode in this series. Thanks so much for following along with me.

My name is Kelly Twigger. I am the CEO and founder at eDiscovery Assistant and the principal at ESI Attorneys.

Let’s dive directly into our decision this week, which comes to us from a case titled SinglePoint Direct Solar LLC v. Solar Integrated Roofing Corp. As you can probably tell from the names of the parties, this is a theft of trade secrets case.

This decision comes to us from just recently (March 21 of 2023) and is written by United States District Judge James Teilborg. Judge Teilborg has 20 decisions in our eDiscovery Assistant database. He’s well-versed in understanding ESI issues, and his decision today is a thoughtful one that gives us a lot of great practical takeaways.

As always, we tag the issues on each of the decisions in our database using our proprietary issue tagging structure. This week’s issues include cost recovery, general objections, ESI protocol, proportionality, and search terms.

Now, this dispute is really brought to us on a motion to compel—although it’s not framed that well, particularly by the Court—regarding the scope of search terms that the parties allegedly agreed to and a few related issues. The plaintiffs who brought this action are seeking $16 million in damages and arguing that defendant’s search terms are objectionable because the terms hit on 410,000 potentially responsive documents. Of those 410,000 documents, the plaintiffs are prepared to produce 122,600 of them but argue that the remaining 287,000 documents are “so voluminous to be objectionable.”

Facts and Timeline

Let’s look, as always, at the timeline for the case. There are a couple of notes that we’ll discuss when we talk about the timeliness argument here of the plaintiff’s objections, but the Court notes that it has very little information from the parties in the motion papers about specifics that it would otherwise want to have.

Here’s the timeline that we do have. The parties exchanged search terms in July of 2022. A few months later, at the end of September 2022, the plaintiffs objected to those search terms. A few months after that, in January of 2023, plaintiffs made additional objections to the search terms. In March 2023, so roughly seven months, eight months after its initial objections, the plaintiffs sent even more objections to the search terms. We’ve got what is essentially a rolling set of objections to search terms that had been proposed by the defendants. There’s some question as to whether or not the parties had agreed on search terms out of the gate.

Defendants here are asking the Court to overrule all of the plaintiff’s objections to the proposed search terms on three different grounds—1) timeliness, 2) that plaintiff’s boilerplate objections are legally insufficient, and 3) that the objections should be overruled as overly broad, unduly burdensome, and disproportional to the needs of the case.

That sets our stage.

Analysis

Let’s talk about the Court’s analysis.

As to the timeliness objection, there are three additional facts that weighed in the Court’s analysis in finding that the plaintiff’s objections were not waived as untimely.

First, in looking at the timeline, as I mentioned, the Court notes that the party’s briefing really failed to provide an exact chronology of when the plaintiffs first made objections and the scope of those objections, which is something that we advocate for the parties to do just about every single week on the Case of the Week. You’ve got to provide a very high level of detail for the Court for it to be able to make a sufficient ruling.

Here the Court notes that it didn’t know what the plaintiff’s objections were out of the gate, or what the level of specificity was in those objections. All it has before it are the objections that the plaintiffs filed in March of 2023, roughly eight months after the original objections.

Second fact that the Court looks to is that while the parties “agreed to run their respective search terms against the database of documents” the Court does not know what “agreed” means in that context. The Court notes in a footnote that to the extent “agreed” merely means to run the search terms in the database, there’s really no excuse for the party’s delay from July of 2022 to December 2022 to complete that step.  Essentially, the Court is saying, look, if you guys agreed to run these search terms back in July of 2022, why are we still having objections? Why are we continuing this whole process? Why weren’t the terms run and documents reviewed and produced?

Third, the Court looks at the language of the ESI protocols that the parties entered into but did not submit to the Court or even show to the Court for a ruling on the language. The Court states that had it been asked to rule on the proposed protocols that it would have found that the parties’ protocols were unmanageable in that they did not set out a specific time frame for objections to search terms. The protocol instead included language that stated, “the requesting party will provide the disclosing party with a reasonable opportunity, no less than 14 days, to object to the scope of the request.” The Court says that that language does not say that an objection will be made in a reasonable time, just that the responding party will get “at least a reasonable time.”

Big difference in that language there, according to the Court. It seems small, but when you really sit and think about it, it’s a pretty important distinction.

Looking at all of those facts, the Court notes that it does not know what agreement between the parties allowed the defendants to respond eight months after the parties exchanged search terms that were agreed to be run, or that it has a full understanding of the objections made because only the final ones from March were submitted to the Court. According to the Court, given that both parties did not act until March of 2023, the defendants by producing documents and the plaintiffs by continuing to object to them, the Court found that both parties, “seemed to believe that March 2023 responses were reasonable so there is no basis to waive plaintiffs objections” and denied defendant’s motion as the timeliness.

The Court next turns to whether or not the plaintiff’s objections were boilerplate and therefore waived. We’ve talked about this issue a number of times on the Case of the Week. The amendments to the Federal Rules of Civil Procedure in 2015 expressly precluded the use of boilerplate objections. That goes back to the Fischer v. Forest case that we’ve discussed here as well. Here, the Court agrees that boilerplate objections do not preserve an objection and that the plaintiff’s objection, which applied to 28 distinct search terms, is a boilerplate objection.

A side note here — there are so many cases now that are addressing this boilerplate objection issue that we’ve added it as an Issue Tag in eDiscovery Assistant. If you’re not familiar with this boilerplate objections issue, you need to get familiar with it, because essentially, the case law now says if you continue to espouse boilerplate objections, instead of providing very specific, factually based objections to individual requests, you are going to waive them. The Court agrees with that precedent here.

But then the Court looks really at some other information in the case. As we already noted, the Court does not have the full context of the objections that plaintiffs have made in front of it. It only has the March 2023 objections. The Court looks at the language in the plaintiff’s responses that states, “By way of example, plaintiffs have objected to the search term acquisition on the basis of relevance.” The Court states that language (“by way of example”) leads it to believe that the plaintiffs had made more particularized objections at some point. Because the record before it was incomplete (i.e., it didn’t have the language of those earlier objections), the Court could not find that plaintiff’s objections were merely boilerplate. As a result, the Court denied the defendant’s argument that plaintiff’s objections were waived for lack of specificity.

Again, you’ve got to be familiar with this boilerplate objection argument. You’ve got to make sure that the objections that you are stating are with specificity to each individual request. There’s some discussion out there amongst practitioners as to whether you can continue to list general objections at the beginning of your document request. I would submit not to do it, but I still see it a lot.

Next argument from the Court addresses the merits of plaintiff’s actual objections and whether they were proportional, unduly burdensome, or overly broad. As we know, all three of those arguments basically overlap into the proportionality analysis. The Court, however, does not evaluate all three of them as part of the proportionality analysis or delve into what we consider to be the six factors of proportionality under Rule 26. Rather, the Court focuses on the scope of the lawsuit, which it states is a wide ranging lawsuit based on 13 claims of relief that are sophisticated in alleging trade secret theft and seeking $16 million in damages. Based on the scope of the case alone, the Court finds that the review and the production of 410,000 documents is proportional.

Now, that ruling does not come as a surprise at all to those of us who engage in these kinds of cases on a daily basis and deal with that level of ediscovery. It’s interesting to me here that the plaintiff is raising this issue. I think there are some underlying tones to this case that perhaps are not well articulated in the plaintiff’s arguments as to what’s happening. We’re going to talk about that as it relates to the search terms.

The next argument that the Court addresses is the unduly burdensome question, which, interestingly, as I mentioned, the Court considers separate from the proportionality analysis.

The plaintiffs argued that having to review all 410,000 documents was unduly burdensome, given that some search terms hit on a portion of responsive documents, but also identified many unresponsive documents. Basically, the plaintiffs want to argue that the sliding scale of relevance of the documents created an undue burden on them to review and produce them. Haven’t heard that one before, to be honest.

The Court rejected that argument, noting that the plaintiffs had admitted on multiple occasions that the discovery of ESI in this case would be voluminous and that the reality of a high dollar commercial case like this one is that ediscovery is always going to be burdensome. The Court noted that that burden here is not so high as to warrant denying the defendant’s relevant discovery, and overruled plaintiff’s undue burden objection.

Finally, the Court addresses the plaintiff’s objections as to the search terms being over broad. The plaintiffs here argue, without any numbers or results from review of the documents (which is very unusual) that the search terms will produce documents not relevant to the case. I feel like that’s kind of a Homer Simpson moment. DOH. Of course, there are going to be documents that are not going to be relevant that are going to hit on search terms. That is the entire point of review prior to production. That’s really where the Court comes out too. There’s a good quote from the Court that I want to share with you:

The fact that a search term is relevant does not eliminate the possibility that it will produce irrelevant documents. Conversely, the fact that a search term will produce irrelevant documents does not mean the term should not be used such that the party seeking discovery will not receive relevant responsive documents merely because the term produced documents that were not relevant. Thus, the issue is what to do with the documents that are responsive to the search term but irrelevant to the case.

The Court then cites the case law that talks about when running a relevant search term, a party does not waive relevance objections to the documents responsive to the search term. Basically, the Court saying, you’re absolutely going to have irrelevant documents that hit on a search term that is relevant to the case. The point of review is to weed out those irrelevant documents. By running a search term that may be overbroad and hits on both relevant and irrelevant documents, which (as we know) happens with just about every search term, you still have not waived the ability to not produce that document on relevance grounds. As such, the Court overrules the plaintiff’s objection to relevance and orders the plaintiff to review all the search term hits and produce relevant documents. No real surprise there.

Takeaways

The most important takeaway from today’s decision is this: a Court cannot know what happened or make an educated ruling if the parties do not put all of the facts before it to allow it to make an informed decision. The Court comments here several times that it does not have a full chronology, that it does not know what the parties meant when it “agreed” to items and that both parties conduct was consistently late. Plaintiffs delayed in objecting. Defendants delayed in providing discovery responses.

I mean, here the plaintiffs didn’t even put the full language of their objections in the motion papers or not so that the Court commented. As such, they took a real chance that the Court would say that they waived their objections as being boilerplate as those appeared in the March 2023 objections. If they put that specificity as it exists in front of the Court, the Court probably would have more on which to weigh those arguments. As it came out, the plaintiffs lucked out in that situation in that the Court refused to waive the objections given that the full record was not before it.

Put that full record before the Court. Make the Court understand the basis of the specificity of the objections that your client has made. It’s very important, as is putting in the clear record of the chronology as to what happened.

There has to be more that happened as to why things were delayed over eight months, although that’s not an unusual set of circumstances, particularly in high dollar cases.

Next takeaway — language in your protocols matters, and it needs to be very clear as to what each party’s obligations and rights are under the protocol. In this case here, the language regarding the timing for objections was not clear, and it precluded the defendants from being able to rely on a timeliness objection that should have otherwise carried the day.

Eight months to object to search terms is a long, long time, particularly after a party has responded and potentially produced documents. That being said, the defendants also really shot themselves in the foot by also failing to respond until the same timeline that plaintiffs responded on the objections.

Next takeaway — getting the Court’s eyes on an approval of your ESI Protocol has two benefits. We’ve talked about these numerous times on the Case of the Week. First, making sure that the language you use is practical in the court’s eyes, as we see here in this decision. Second, making sure you have a court order as a basis for failing to allege a violation under FRCP 37(b), which provides for sanctions for failure to comply with a court order.

If the parties had submitted the proposed protocols to this court, this issue would have been resolved in terms of the language, and the defendants would have an order that the plaintiffs had failed to comply with as a basis for their timeliness argument. Now, obviously, we don’t know whether that alleged basis of violation of an order would have been obfuscated by the fact the defendants also didn’t respond for eight months. But it’s really important to consider that that language matters and the ability to rely on that language and have a court order is key when it comes to the ESI Protocol.

All right, a comment here on some of these takeaways. The search terms in this case are pretty baffling, and we have very little information about the negotiations. It doesn’t seem like the plaintiff pushed back here on generic phrases like “acquisition” that the defendants wanted. But a review of search term hits in the database could have allowed the plaintiffs to put a more specific search term modifier or string before the court that would have narrowed the search term hits and still provided relevant documents.

You need to take an iterative approach with search terms, and there’s no way you can do that without getting into the data. If you don’t know how, work with your litigation support team, your service provider, etc., whoever you have that can help you get into the data and understand how to look at and find effective search terms for relevant and responsive documents. They know how to do that work effectively. Tell them what you need and let them help you learn how to do it. The best way to learn ediscovery is to do it.

Okay, final takeaway. You need to understand the volume of discovery that your client will be forced to bear the cost of when you bring an action. Review and production of 400,000 documents in a $16 million theft of trade secrets case is always going to be proportional, absent some very specific, compelling facts that are not present here. Know what you’re getting your clients into and be prepared with a plan to conduct that discovery efficiently and effectively.

Conclusion

That’s our Case of the Week for this week. Thank you so much for joining me. We’ll be back again next week with another decision from our eDiscovery Assistant database.

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