In a recent order in Apple Inc. v. Samsung Electronics Co. Ltd., et al., United States Magistrate Judge Paul S. Grewal reinforced the importance of cooperation and transparency in the discovery process, especially when it involves electronically stored information. The order granted Apple’s motion to compel Google, a non-party, to produce the search terms and list of custodians Google used when responding to Apple’s subpoena. Judge Grewal’s order is significant because it underscores that a responding party, whether or not a party to the litigation, should be prepared to disclose the methodology it used to identify and collect electronically stored information in response to a discovery request.
During the course of its well-publicized copyright infringement litigation with Samsung, Apple subpoenaed Google for certain information related to its claims. Based on its suspicion that Google’s production was deficient, Apple sought from Google the details of how it searched for responsive information. Google opposed Apple’s motion, arguing that producing the search terms and custodians would be “unduly burdensome.” (Google had initially taken the position, which it later abandoned because of adverse case law, that such information was protected by the work-product doctrine.) The Court found that Google provided “no evidence” to support a conclusion that “collecting a list of search terms and custodians compiled within the last six months would be oppressive or burdensome.” Google also argued that it was exempt from any obligation to show the sufficiency of its production because it was a non-party to the litigation and Apple neither identified specific information that was missing from the production nor suggested alternative search terms. Additionally, Google maintained that disclosing its search methodology would lead to overly burdensome requests for additional discovery.
The Court framed the issue as whether it was “extraordinary” to expect third parties to be transparent about their discovery methods. In its analysis, the Court relied primarily on DeGeer v. Gillis, a 2010 case from the Northern District of Illinois. Faced with a similar set of facts, former Magistrate Judge Nan Nolan ordered in DeGeer that the subpoenaed third party produce the search terms and the names of the custodians. The Court in Apple agreed with the Court in DeGeer that “transparency and collaboration is essential to meaningful, cost-effective discovery,” and the Apple court found that Google’s attempt to “stand outside of these tenants because of its third-party status” was “unpersuasive.” However, Apple was chastised as well for its failure to “collaborate in its efforts to secure proper discovery from Google” because it requested the search terms and custodians only after it suspected that Google’s production was deficient, and it “made no effort to explore meaningful collaboration on obtaining the documents it believed were not produced.”
Judge Grewal concluded that “production of Google’s search terms and custodians to Apple will aid in uncovering the sufficiency of Google’s production and serves greater purposes of transparency in discovery.” In keeping with its focus on cooperation, the Court also ordered Apple and Google to meet and confer in person following the production of the search terms and custodians “to discuss the lists and to attempt to resolve any remaining disputes regarding Google’s production.” Judge Grewal’s order makes clear that transparency and cooperation are of paramount importance during the discovery process, especially when electronically stored information is at issue, and that a subpoenaed third party, just like a named party, should be prepared to provide the details of its search methodology.