Email Search Terms at Issue after Efforts to Control Discovery “Implode”
In the opening paragraph of the Order re: Discovery Disputes in the patent case Mediatek, Inc. v. Freescale Semiconductor, Inc., Case No. 11-5341 UGR(JSC)(N.D.Cal. August 28, 2013), the magistrate judge praised the parties’ attempts to limit high discovery costs by a stipulated ESI Discovery Order. Unfortunately, the judge then admitted that such “laudable efforts” seemed to have “imploded.” There were multiple discovery issues before the court, one issue of contention was an email search term dispute.
Just as the magistrate noted, the parties had agreed in the ESI Order on email and search terms: MediaTek sought to compel Freescale to produce discovery from 15 email search terms from 7 custodians, with the maximum number of search terms per custodian being only 7. This was how the discovery order was written and agreed upon; however, Freescale objected when it received the discovery requests.
MediaTek offered multiple variations on email thread keyword search terms while attempting to classify such variations as constituting only one term. For example, MediaTek offered “United States” and “domestic” as only one search term, as it claimed that to be a variant on the same issue. Another example was regarding variants of patent products; it requested “mdf” or “mx” or “mpc” or “ppc” or “pcf” or “sc” as only one search term. The court noted that this request of these six variations of product names is actually six separate search terms.
Freescale had also objected to the search terms as “overbroad,” but the magistrate called this objection premature. Ordering MediaTek to revise its plaintiff electronic discovery requests to the limitations within the agreed ESI Order, the judge also ordered Freescale to run a test search based on plaintiff’s amended search terms. If after the test search, the resulting electronic data was disproportionately burdensome to the number of hits, then Freescale could renew its objection before the court.