Last week, U.S. Magistrate Judge Paul S. Grewal relied on the Federal Circuit’s recently-released model eDiscovery order for guidance in crafting a limited search protocol that significantly narrowed the terms of a subpoena served by plaintiff Software Rights Archive LLC (“SRA”) on non-party Kleiner Perkins Caufield and Byers (“KPCB”).  In re Google Litig., Case No. C 08-03172 RMW (PSG), 2011 U.S. Dist. LEXIS 140656 (N.D. Cal. Dec. 7, 2011). 

KPCB (a venture capital firm that had invested in two of the defendants in this patent infringement action, Google and AOL) argued that the 34 categories of documents sought by the subpoena were overly broad and sought KPCB trade secrets.  After considering the scope of the requests and SRA’s apparent failure to consult publicly available sources before issuing the subpoena, Judge Grewal concluded that requiring KPCB to conduct a search “anywhere near the full scope” of SRA’s broad requests would be “inappropriate” and that “[a]t best, KPCB’s documents on three specific issues are significant enough to justify the burden and expense of their collection, processing, review, and production.”

Although by its terms the Federal Circuit’s Model Order Limiting E-Discovery in Patent Cases is directed to discovery from parties, Judge Grewal noted that he “look[ed] to the pertinent portions” of the model order in granting in part SRA’s motion to compel because the model order’s goal of balancing eDiscovery burdens and benefits was equally applicable to non-party eDiscovery.  The result?  A search protocol that substantially narrowed the subpoena’s 34 categories of document requests:

Limited number of search terms

• SRA will provide KPCB with a list of five narrowly-tailored search terms related to the three issues identified by the court.
• Conjunctive combinations of multiple words/phrases that narrow a search (e.g., documents containing both “X” and “Y”) count as a single search term.
• Each word/phrase in a disjunctive combination that broadens a search (e.g., documents containing either “X” or “Y”) counts as a separate search term (excluding variants of the same word).
• The court encouraged all other search syntax that narrows a search (e.g., “but not,” “w/x”).

Limited number of custodians

• KPCB will use SRA’s search terms to search the email and electronic document files of the five persons “most involved” in KPCB’s investments in Google and AOL.

Cost shifting

• SRA will bear all reasonable fees and costs caused by search terms beyond the limits agreed to by the parties or granted by the court.
• The use of narrowing search criteria will be considered in any cost-shifting proportionality analysis.

This is not Judge Grewal’s first use of the Federal Circuit’s model order — over plaintiff’s objections, he adopted much of the model order into a November 2, 2011 eDiscovery order governing the DCG Systems, Inc. v. Checkpoint Technologies, LLC litigation, observing in an accompanying order:

Perhaps the restrictions of the Model Order will prove undue.  In that case, the court is more than willing to entertain a request to modify the limits. But only through experimentation of at least the modest sort urged by the [Federal Circuit] Chief Judge [Randall Rader] will courts and parties come to better understand what steps might be taken to address what has to date been a largely unchecked problem.

DCG Systems, Inc. v. Checkpoint Technologies, LLC, Case No. C-11-03792 PSG at 4 (N.D. Cal. Nov. 2, 2011).

Is this limited-search-term, limited-custodian, keyword-based approach a reasonable balance between the competing needs of locating relevant evidence and controlling eDiscovery costs?  And what about the phased, issue-specific email provisions of the Federal Circuit’s model order (incorporated by Judge Grewal in his Nov. 2, 2011 DCG Systems order but not in his In re Google order)?  The inadequacies of keyword search have long been discussed, beginning at least as early as David C. Blair and M.E. Maron’s 1985 article, An Evaluation of Retrieval Effectiveness for a Full-Text Document-Retrieval System (see also their 1984 working paper).  And the value of iterative search protocols (not addressed in the Federal Circuit-like approach) is also now well known.  See, e.g., Technology-Assisted Review in E-Discovery Can Be More Effective and More Efficient Than Exhaustive Manual Review, Maura R. Grossman and Gordon V. Cormack, XVII RICH. J.L. & TECH. 11 (2011) (Apr. 21, 2011); The Sedona Conference® Best Practices Commentary on The Use of Search and Information Retrieval Methods in E-Discovery (August 2007 Public Comment Version).  More on the topic in a future post . . . .