"One Ring to Rule Them All?" E-Discovery Search Methodology in Patent Litigation in Light of Recent Model Orders and Case Law

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.
But 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

Somewhere along the road of litigation and technology, e-discovery's All-Seeing Eye grew bigger than its stomach. Overall, 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. For e-mail, hotly demanded due to the hopes of finding a smoking gun in informal and hastily-sent communications, the proportion is even lower. This trend is especially concerning in intellectual property litigation -- patent cases in particular.

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 similar and helpful Model Orders for e-discovery to curtail mass and unnecessary production.  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 terms that can be used in Boolean searches of a party’s electronic correspondence; (c) preclude production of all but limited metadata absent good cause; and (d) require that if a party serves broader discovery, it would 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, one of the nation’s most popular patent litigation venues for plaintiffs (and the dwelling of trolls in particular), followed up its own Model Order for e-discovery in patent cases. The Texas version differs from the Federal Circuit version in that it (a) permits requesting e-mail from eight custodians; (b) doubles the permissible search terms to ten; and (c) does not contain the Federal Circuit's flexibility for additional discovery or its cost-shifting provisions for adding more custodians or search terms, but does allow parties to move to expand discovery for less than "good cause." Other provisions include requiring the parties to exchange the identities of the fifteen most significant email custodians, allowing for targeted early discovery, and providing guidance on the format of ESI production -- for example providing for production as TIFF images, governing when documents must be produced in searchable format, delineating the sources of data that must be preserved, and excusing parties from restoring back-ups and 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

Together, the two Model Orders promise to be valuable resources, brainchildren of jurists with among the most patent litigation experience in the judiciary. 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. Nor is there guidance on how the parties should forge those terms to make sure they return the bulk of relevant and responsive material. In truth, key-word searching may be well on the way to becoming the hard-copy paper document review in today's electronically-favored process -- outmoded and outdated. As such, propounding keyword searching as the gold standard threatens to elevate process over substance, expediency over efficacy.

For example, the results returned from a simple key-word search can be over-inclusive. The terms may be so broad that they return a googol of "hits" to wade through, many of which have nothing to do with the core issues. The collection of terms can likewise be 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 invention). Or perhaps the propounding party simply failed to guess or the searching party's failed to volunteer, "precious" catchphrases that would uncover what a party conceals in its back e-pocket. Ralph Losey, in his popular e-Discovery Team blog, has even 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 servers for the simple phrase ‘‘Lord of the Rings’,’ And this was without a single-digit limit on search terms.

 

"Far below the deepest delving of the dwarves, the world is gnawed by nameless things." 
                  - J.R.R. Tolkien, Lord of the Rings: The Two Towers

Another important fallacy of keyword searching is the fact that it is increasingly not the names and words (the sole focus of keyword searching) that dictate importance. The exact terminology used in an e-mail is becoming less meaningful, with the context -- the individual(s) who sent and received the message, the timing, and its location on the system -- mattering more and more. Keyword searches alone will fail as an All-Seeing Eye:  it will miss many of these features.

What, then, is the One Ring to Rule Them All that should have been utilized? And is there even one? In parallel with our Fellowship's journey and the forging of their Model Orders in the hot fires of patent litigation, another power was on the rise: predictive coding. While such computer-assisted review tools (which allow for automation of a major proportion of document review, with less need for human management) have been around for several years, it was June 2011 when one of the larger e-discovery vendors was issued a patent on the process, thrusting it into even greater prominence. Unlike keyword search terms, predictive coding teaches computers to "predict" the relevant documents based not only on key terminology, but features like dates, names, broader phrases, and other items of context.  Moreover, it is estimated that by automating a significant amount of e-discovery review, predictive coding can save up to 70% of review costs.

While courts and attorneys have been slow to adopt this new technology, in the same month the Fellowship of the Eastern District of Texas forged its Model Order, Magistrate Judge Andrew Peck of the U.S. District Court for the Southern District of New York approved the use of predictive coding in Monique Da Silva Moore, et al. v. Publicis Group SA, et al, 2012 U.S. Dist. LEXIS 23350 (S.D.N.Y. Feb. 24, 2012), aff'd, 2012 U.S. Dist. LEXIS 58742 (S.D.N.Y. Apr. 26, 2012). While neither party in Da Silva Moore actually objected to the use of the technology -- the decision addressed implementation rather than use -- that same week a state court judge approved the use of predictive coding over one party's objection. Global Aerospace v. Landow Aviation , No. CL 61040 (Vir. Cir. Ct. Apr. 23, 2012). Between Da Silva Moore and Global Aerospace, it is thus becoming clear that the judiciary will not hesitate to incorporate predictive coding into e-discovery where appropriate. In fact, Judge Peck noted that computer-assisted review "should be seriously considered for use in large-data-volume cases," and Judge Andrew Carter, who affirmed Da Silva Moore, acknowledged that manual review, upon which keyword searching relies, "is prone to human error and marred with inconsistencies from the various attorneys determination of whether a document is responsive."

 

All that is gold does not glitter,
Not all those who wander are lost;
The old that is strong does not wither,
Deep roots are not reached by the frost. 

         --  J.R.R. Tolkien, Lord of the Rings: The Fellowship of the Ring

But despite the limits to keyword searches and the advantages of predictive coding, the latter may still not be an All-Seeing Eye, or the One Ring to Rule Them All. There are times in which the Old Ways of keyword searching may still be the best candidate. In patent troll cases, for example, where discovery tends to be disproportionately heavy on the accused infringer's side and lighter for the troll (who usually has no product or business other than patent licensing and enforcement to speak of), focused keyword searching may be sufficient. The same is true for other smaller patent and IP litigation disputes. Even then, however, the limitations of keyword searching make it prudent to use it only in conjunction with other search tools, and not as a stand-alone methodology. (Case in point: the arsenal of tools in predictive coding includes keyword searching). But for non-patent troll cases, and for more complex, competitor-based patent and other IP disputes (for example, trade secret misappropriation), predictive coding presents a new One Ring to Rule Them All, ensuring the capture of the greatest amount of relevant and responsive materials while still conserving costs.  At the very least, it presents a viable alternative to the Model Orders' presumption of keyword searching.

Unfortunately, at the time the Fellowship's Model Orders were written a year ago, predictive coding, like Strider, the Ranger of the North, had still not quite revealed itself as an Aragorn, a potential heir to the throne. If the Orders had come out today, perhaps they would have accounted for alternate methodologies. Today's Seventh Circuit E-Discovery Pilot Program, for example, is seriously considering the merits and pitfalls of various search methodologies, including predictive coding. Unfortunately, for now there remains a disconnect between the Model Orders and the growing acknowledgment of predictive coding among attorneys, their clients and the courts. Moreover, the best practices remain to be written, both for utilizing predictive coding and for choosing the best keyword searches under the Model Orders and otherwise. Thus, even if we could choose and carry One Ring to Rule Them All through the rocky terrain of patent litigation, the path on which to carry it remains unclear, much as it was for Frodo Baggins:

At last with an effort he spoke, and wondered to hear his own words, as if some other will was using his small voice. "I will take the Ring," he said, "though I do not know the way.”

The "Wake-Up Call" Rings Twice: Blawgs Buzzing on the Importance of Thoughtful, Collaborative Search Protocol Design

In reviewing the E-Discovery blawgs this week, a recurring theme emerged:  the pitfalls and limitations of keyword searching, and the need for collaboration and cooperation between counsel to devise effective search protocols.

A number of the E-Discovery blawgs this week featured the ABA Journal's article on improving e-discovery search protocols: "In Search of the Perfect Search."  The thought-provoking article highlights the dismaying lack of progress in finding cost-effective ways to locate and retrieve relevant documents through keyword searching. Bottom line? The way we are doing it now is wrong. Although technology has advanced at a rapid clip over the past twenty years, it has not been able to overcome "the fundamental ambiguity of language": research shows that paralegals and attorneys using simple keyword searches on a group of documents find, on average, only twenty percent of the relevant documents. That is basically the same result research found in similar studies conducted twenty years ago. 

The answer? Using a combination of search methods and tools. The Text Retrieval Conference Legal Track is working on a process and protocol to improve the results of digital searches. According to the article, however, few E-Discovery vendors have participated in the project, perhaps reluctant to have the effectiveness of their own search technologies quantified. Early recommendations from the project on how to improve on the usual keyword search include:

 

  • Working with opposing counsel to identify the best search terms;
  • Negotiating proposed Boolean search strings;
  • Using sampling to see whether the search engines are really finding the relevant documents.

Perhaps not-so-coincidentally, the April 3 post from the Electronic Discovery Blog discusses a Southern District of New York opinion that emphasizes these same points in delivering a "wake-up call" to the local bar "about the need for careful thought, quality control, testing, and cooperation with opposing counsel in designing search terms or 'keywords' to be used to produce emails or other electronically stored information . . . " In that case, a dispute over delays and defects in a Bronx Courthouse construction project, parties sought emails from non-party Hill, the construction management company. One party proposed searching solely with the names of the parties and the names of the project as search terms. The other parties all proposed very broad keywords that would result in production of the entire database. Non-party Hill failed to contribute any helpful suggestions. 

 

As a result, the court was forced to create a search protocol itself, without meaningful assistance from the parties. The court closed its "wake-up call" with some golden words of advice for attorneys practicing in the SDNY, which bear repeating for attorneys and businesses facing e-discovery issues across the country:

 

Electronic discovery requires cooperation between opposing counsel and transparency in all aspects of preservation and production of ESI. Moreover, where counsel are using keyword searches for retrieval of ESI, they at a minimum must carefully craft the appropriate keywords, with input from the ESI’s custodians as to the words and abbreviations they use, and the proposed methodology must be quality control tested to assure accuracy in retrieval and elimination of “false positives.” It is time that the Bar — even those lawyers who did not come of age in the computer era — understand this.

 

Words to live by.