In Humanmade v. SFMade, No. 23-cv-02349-HSG (PHK) (N.D. Cal. July 10, 2024), California Magistrate Judge Peter H. Kang addressed the parties’ dispute regarding seven search terms by ordering the parties to follow a specific process (including meet and confer) regarding the terms, established a procedure for clawback of privileged documents to expedite production, and required lead counsel for both parties to submit a declaration explaining the bases for their representations to address the contradictory representations of what happened during the meet and confers.

Case Background

In this case where the plaintiff contended that the defendant began selling and using its copyrighted manufacturing training program without permission, Plaintiff complained that Defendant’s efforts to search for and collect responsive documents was deficient, and that Defendant’s engagement of an eDiscovery vendor resulted in further delays because the Parties were unable to reach agreement on all the search terms to be used to search for responsive documents.

Defendant confirmed that it engaged an eDiscovery vendor and represented that the Parties agreed on the five custodians whose electronic files are to be searched, as well as “several” search terms for the ESI database but disputed seven search terms because they yielded too high a hit count, thus making review of documents based on these seven search terms overly burdensome. Contrary to Plaintiff’s representations to the Court that Defendant had produced no documents since April, Defendant claimed it had produced approximately 14,000 documents to Humanmade in two productions.

Plaintiff further argued that Defendant refused to disclose hit counts resulting from the seven disputed search terms and refuses “to provide an opportunity for Humanmade to propose alternative terms.” Contrary to Plaintiff’s representations, Defendant argued that “Humanmade has been unwilling to engage in a discussion of modifying the search terms following the search being conducted.”

Judge’s Ruling

Judge Kang noted: “There is no dispute here over whether the document requests (and thus the seven search terms directed to the document requests) lack relevance. Rather, the dispute is whether running these seven additional search terms is or is not overly burdensome because they yield an excessive number of allegedly irrelevant document ‘hits.’ Neither Party has submitted all seven proposed search terms to the Court, although SFMade has provided one of the proposed search terms as an example.”

He also noted: “The Court is disappointed that the Parties appear to have failed at the kind of communication during meet and confers which is expected and necessary for effective resolution of discovery issues. The fact that the Parties have made drastically different representations to the Court about who said what or who refused to provide information is equally disappointing. Experienced counsel should be capable of and, indeed, are expected to resolve ESI and search term disputes typically without the need for Court intervention, because eDiscovery issues are common in the modern era and members of the bar are expected to be familiar with and capable of competently working through these kinds of issues.” He also noted he was “disappointed that SFMade has apparently failed to share statistics on hit counts for the seven disputed search terms transparently with Plaintiff.”

To address the dispute regarding seven search terms, Judge Kang, noting that “the Parties have forced the Court to ORDER counsel to undertake the normal type of search term negotiation and resulting ESI production that they should have done without the need for Court intervention”, ordered the following:

• Disclosure of Hit Counts: Defendant was ordered to provide Plaintiff with the hit count statistics for the seven disputed search terms.
• Propose Modified Search Terms: Plaintiff was to propose up to seven modified search terms aimed at reducing the hit count.
• Run Modified Search Terms: Defendant was to run the proposed modified search terms and report back on the hit count statistics.
• Meet and Confer: Lead trial counsel for both parties were ordered to meet and confer, either in person or via videoconference, to negotiate reasonable modifications to the search terms based on the hit count statistics.
• Reporting and Finalization: If the parties could not finalize the search terms, they were required to file a joint notice summarizing the dispute and attend an in-person hearing if necessary.

Additionally, “in order to expedite Defendant’s production of ESI and obviate the need for delay caused by privilege reviews prior to production (and disputes over privilege/work product issues)”, Judge Kang also established procedures for dealing with inadvertently produced privileged information, including the issuance of a “Clawback Notice” and the handling of documents for which clawback was requested.

Finally, noting that “the Parties provided contradictory representations of what happened during the meet and confers in the letter brief”, Judge Kang ordered lead trial counsel for both parties to file declarations under oath to clarify the conflicting representations made to the court over the parties’ dispute regarding seven search terms.

So, what do you think? Are you surprised the Court had to step in to address the parties’ dispute regarding seven search terms? Please share any comments you might have or if you’d like to know more about a particular topic.

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