by Terri A. Thomas
In the continuing patent infringement saga between Plaintiff Apple, Inc. (“Apple”) and Defendants Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Telecommunications America, LLC (collectively “Samsung”), Magistrate Judge Paul S. Grewal of the District Court of Northern California ordered third party Google, Inc. (“Google”) to produce a list of the search terms and custodians Google used to respond to Apple’s requests for production. Case No. 12-CV-0630-LHK (PSG), Dkt. 501, filed May 9, 2013.
Apple was not, in the present motion, seeking to compel additional discovery from Google, nor was it opposing Google’s objections to Apples requests; Apple sought only to know “how Google created the universe from which it produced documents” in order to “evaluate the adequacy of [its] search”. Google initially objected based on attorney-client privilege and work-product grounds, though recognized that “courts generally have not found protection for that type of information.” See Formfactor, Inc. v. Micro-Probe, Inc., Case No. C-10-03095 PJH (JCS), 2012 U.S. Dist. LEXIS 62233, 2012 WL 1575093, at *7 n.4 (N.D. Cal. May 3. 2012) (listing cases explaining why search terms are not work product). The court considered Google’s complaint that “the impact of requiring non-parties to provide complete ‘transparency’ into their search methodology and custodians in responding to non-party subpoenas whenever unsubstantiated claims of production deficiencies are made would be extraordinary”, and that providing its list of search terms and custodians would open it to further burdensome discovery by Apple.
The court cites to The Sedona Conference Cooperation Proclamation (The Sedona Conference, Preface (Nov. 2012)) and the principles of “cooperative, collaborative, and transparent discovery”, and relies heavily on Judge Nolan’s holding in DeGeer v. Gillis, wherein Her Honor stated that “[t]he proper and most efficient course of action would have been agreement by [the third party and the defendants] as to search terms and data custodians prior to [the third party’s] electronic document retrieval.” 755 F. Supp. 2d 909 (N.D. Ill. 2010).
The court ultimately held that “transparency and collaboration is essential to meaningful, cost-effective discovery”, and such policies apply equally to parties and third-parties alike, and ordered Google to produce its search terms and custodians to Apple.
This case makes clear that search terms and custodians are not protected work product. If a third-party has to disclose search terms and custodians, certainly parties to litigation will have to do so. Courts are continuing to require greater transparency in the discovery process, and requesting and producing parties would be well-served in cooperating and attempting to reach agreement on search terms and custodians early in the discovery planning process.