This Sidley Update addresses the following recent developments and court decisions involving e-discovery issues:

  1. a U.S. District Court for the Western District of Pennsylvania case setting an evidentiary hearing to consider whether Fed. R. Evid. 502(b) or 502(d) should apply to future productions of documents where plaintiff had allegedly abused the protections of the rule by failing to conduct a comprehensive preproduction privilege review and clawing back hundreds of documents postproduction
  2. a U.S. District Court for the District of Massachusetts opinion denying defendant’s motion to compel forensic imaging of the plaintiff’s cellphone, finding that the request did not meet the relevance or proportionality requirements of Fed. R. Civ. P. 26(b)(1) or the spoliation requirements of Fed. R. Civ. P. 37(e)
  3. a U.S. District Court for the District of Idaho decision vacating a magistrate judge’s order denying a search warrant allowing law enforcement officers to apply an individual’s fingers to a cellphone to unlock the cellphone, finding that the application of the finger to the cellphone sensor was no more than the capture of a physical characteristic and not testimonial evidence and therefore did not violate the individual’s Fifth Amendment privilege against self-incrimination
  4. a U.S. District Court for the Western District of Washington ruling granting a Fed. R. Evid. 612 motion to compel plaintiff to produce a document drafted by plaintiff’s counsel because counsel used the document to refresh plaintiff’s memory in advance of a deposition

1. In Arconic Inc. v. Novelis Inc., 2019 WL 911417 (W.D. Pa. Feb. 26, 2019), Judge Joy Flowers Conti set an evidentiary hearing to consider whether Fed. R. Evid. 502(b) or 502(d) should apply to future productions of documents where plaintiff had allegedly abused the protections of the rule by failing to conduct a comprehensive preproduction privilege review and clawing back hundreds of documents postproduction.

In this trade secrets case, Judge Conti had appointed a special master to resolve discovery disputes. Id. at *1. The parties submitted a dispute to the special master regarding three documents plaintiff produced and later clawed back pursuant to a protective order that provided the “maximum protection” allowed under Rule 502(d). In a report and recommendation, the special master concluded that each of the documents was, in fact, privileged and issued several recommendations regarding how the protective order would be applied to future clawbacks.

In particular, the special master found that plaintiff had taken “unfair advantage” of the Rule 502(d) protections in the protective order by adopting “a screening methodology based on electronic term searches rather than performing a comprehensive preproduction privilege review.” The special master concluded that plaintiff’s failure to conduct a comprehensive privilege review was an “inefficient use of resources” because, among other things, it imposed an excessive burden on the special master to rule on clawback challenges by the defendants. Going forward, the special master recommended that the parties be subject to the waiver protections in Rule 502(b), which permit clawbacks so long as the producing party has taken “reasonable steps to prevent disclosure and rectify the error.” Documents already produced would be subject to the waiver protections of Rule 502(d). The special master also outlined a process for identifying any outstanding privilege disputes for documents already produced, which would give plaintiff a 30-day window to review its prior productions and identify all privileged documents. Plaintiff objected to the special master’s report and recommendation. Id. at *2. 

Plaintiff first argued that the special master had imposed an unreasonable deadline on plaintiff’s ability to assert privilege in connection with a produced document. According to plaintiff, there was no such time limit set forth in the protective order. Judge Conti rejected this argument, noting that privilege disputes at trial would be “unduly disruptive” and that all privilege disputes related to trial exhibits must be resolved no later than the final pretrial proceedings. Moreover, Rule 26 and applicable local rules provide that parties must make timely assertions of privilege when documents are used at deposition or otherwise identified by the opposing party as a document that may be used at trial. Id. (citing Fed. R. Civ. P. 26(a)(1)(A)(ii); Local Rule 16.1(C)(1)(e)).

Plaintiff next argued that the special master had erred in stating that defendants were permitted to inquire into relevant facts that they learned from the privileged communications. Judge Conti explained that the attorney-client privilege protects communications, not underlying facts. Accordingly, “[o]pposing parties are entitled to inquire into relevant, nonprivileged facts, even if they learned about those facts from an inadvertently produced document.” Judge Conti also noted that to the extent clawed-back documents could be redacted, they must be and “[a]ny facts contained in the documents cannot be redacted.”

Finally, plaintiff argued that the special master had impermissibly concluded that Rule 502(b) — not Rule 502(d) — should apply to documents produced in the future. Id. at *3. Judge Conti noted that parties are encouraged in “virtually all civil cases” to incorporate Rule 502(d) protections into their protective orders because it will “generally save time and money and reduce disputes.” That said, relevant commentary has stated that Rule 502(d) should “not be used as a cost-shifting tool allowing the producing party to make a ‘data dump’ and requiring the requesting party to identify privileged documents.” Id. (The Sedona Conference Commentary on Protection of Privileged ESI, 17 Sedona Conf. J. 95, 136 (2016)).

Ultimately, Judge Conti elected to set an evidentiary hearing to determine whether Rule 502(b) or (d) should govern. Id. at *4. At the hearing, plaintiff was instructed to be prepared to discuss in camera, among other things: “(1) the tools, procedures and search terms used to perform the initial electronic screening; (2) the reason or reasons 1,200 privileged documents were produced; (3) the estimated costs to perform a retroactive privilege review; (4) the costs to comply with Rule 502(b) for future document productions in this case; (5) its proposed plan to identify and resolve disputes on all inadvertently produced privileged documents to date; and (6) whether different technology tools or procedures can be and will be implemented to minimize inadvertent productions of privileged documents going forward.” For its part, defendants were asked to be prepared to discuss “(1) how [plaintiff] allegedly abused the protections of Rule 502(d); (2) the costs incurred by [defendants] as a result of [plaintiff’s] alleged misconduct; (3) [defendants’] costs to comply with Rule 502(b) going forward; and (4) its proposed plan to identify and resolve disputes on all inadvertently produced privileged documents to date.”

2. In Hardy v. UPS Ground Freight, Inc., 2019 WL 3290346 (D. Mass. July 22, 2019), Magistrate Judge Katherine A. Robertson denied UPS’s motion to compel forensic imaging of plaintiff’s cellphone, finding that the request did not meet the relevance or proportionality requirements of Fed. R. Civ. P. 26(b)(1) or the spoliation requirements of Fed. R. Civ. P. 37(e). This discovery dispute arose in a discrimination case in which plaintiff alleged his former employer, UPS Ground Freight, Inc., retaliated against him for making complaints regarding racial discrimination in the workplace. During discovery, UPS asked plaintiff to produce any records concerning “any communications, discussions, conversations or meetings [he] had with anyone now or formerly employed by UPS concerning any of the allegations in the complaint” and “[a]ny and all documents or other records, including but not limited to ... emails and text messages ... evidencing communications between [him] and any other current or former employee, supervisor, manager, or agent of Defendant related to your Complaint or this Litigation.” Id. at *1-*2. During plaintiff’s deposition, he discussed text messages with current and former employees of UPS about various topics, including one exchange “a long time ago” with his then-supervisor (a current employee of UPS) about an inspection of tie-rods on a vehicle. Id. at *2. Plaintiff claimed that he no longer had these text messages, but this led UPS to believe that the plaintiff had additional text message exchanges with UPS employees that had not been produced. Plaintiff claimed to have produced all relevant, responsive text messages. UPS filed a motion to compel plaintiff to produce a forensic image of his cellphone in order to “(1) ascertain the scope of discoverable but allegedly withheld information; (2) obtain clear and reviewable copies of relevant text messages; and (3) recover [allegedly spoliated] text messages.”

Citing Fed. R. Civ. P. 26(b)(1), Magistrate Judge Robertson considered whether compelling plaintiff to produce a forensic image of his cellphone was relevant to the claims and defenses in the case and proportional to the needs of the case given the cellphone owner’s “compelling privacy interest in the contents of his or her cell phone.” Id. (citation omitted). With respect to relevance, she noted that the request was not limited in any way and that UPS’s request “threaten[ed] to sweep in documents, and information that are not [remotely] relevant to the issues in the case,” including private messages, emails, contacts, and photos. Id. at *3 (quoting Henson v. Turn, Inc., 2018 WL 5281629, at *5 (N.D. Cal. Oct. 22, 2018)). Even assuming the text messages discussed during plaintiff’s deposition were relevant, “courts have been wary to grant a motion to compel forensic imaging in response to a request for information that has not been shown to be at the heart of a claim or defense in the ongoing litigation.” Id. (citations omitted). Absent a more specific showing, Magistrate Judge Robertson concluded that UPS did not demonstrate that plaintiff had withheld relevant information and did not establish that the circumstances warranted imaging the entire contents of plaintiff’s cellphone.

Regarding proportionality, Magistrate Judge Robertson balanced the utility of a cellphone forensic examination against the inherent privacy concerns associated with mobile devices. She found that aside from the specific messages discussed during plaintiff’s deposition, UPS had not established that plaintiff had deleted or lost relevant information from his phone. Further, with respect to the messages discussed during plaintiff’s deposition, UPS had not demonstrated that (1) the text messages would actually be recovered by the suggested forensic examination, or (2) it had attempted a less intrusive means of obtaining the information, such as requesting the known messages from the other individual involved. In addition, UPS did not propose a protocol that would limit its access to private or privileged contents of the plaintiff’s cell phone. Id. at *3-*4. UPS’s intention to create a forensic image to determine whether plaintiff failed to produce images that UPS speculated may exist suggested that UPS sought “broad and unfettered access to the contents of Plaintiff’s cell phone.” Id. at *4.

Magistrate Judge Robertson then evaluated UPS’s argument that forensic imaging of plaintiff’s phone would be a proper sanction for plaintiff’s alleged spoliation of the relevant text messages. Applying Fed. R. Civ. P. 37(e), she determined that UPS did not meet its burden of demonstrating spoliation. UPS did not ask plaintiff how, when or why he lost the messages discussed during his deposition. Therefore, no foundation existed for UPS’s contention that plaintiff had not taken reasonable steps to preserve relevant evidence while reasonably anticipating litigation and no evidence that plaintiff intentionally deleted the messages or acted with intent to destroy evidence. UPS also had not established that the messages could not be obtained from another source. Therefore, Magistrate Judge Robertson found no basis to order forensic imaging as a sanction, and UPS’s motion was denied. Id. at *5-*6.

3. In In the Matter of the Search of: A White Google Pixel 3 XL Cellphone in a Black Incipio Case, 2019 WL 3401990 (D. Idaho July 26, 2019), Chief District Judge David C. Nye vacated a magistrate judge’s order denying a search warrant seeking authority for law enforcement officers to apply an individual’s fingers to a cellphone found during a search of his residence because, in Judge Nye’s view, the requested warrant would not violate the individual’s Fifth Amendment privilege against self-incrimination. Id. at *7. As part of its investigation of an individual suspected of being in possession of child pornography in violation of 18 U.S.C. § 2252(a)(5)(B), the government properly obtained a warrant authorizing a search of the individual’s person, vehicle and residence. Id. at *1. The government’s warrant also permitted seizure of “desktop computers, mobile phones, tablets, server computers, and network hardware.” While searching the individual’s residence pursuant to the warrant, the government seized a cellphone found in a bathroom. The seized cellphone was inaccessible, however, without a passcode or a fingerprint to unlock it.

Shortly thereafter, the government brought a sworn criminal complaint against the individual and procured a bench warrant authorizing his arrest. The government also applied for an additional search warrant seeking authorization to allow law enforcement to “compel the subject to provide biometric input needed to unlock the ... cellphone ... by pressing any finger and/or thumb of any hand of the individual against the sensor of the fingerprint reader used to unlock the ... phone.” Id. (internal brackets and quotations omitted). After review, the magistrate judge issued an order denying the additional search warrant on the basis that, if granted, the warrant would violate the individual’s Fifth Amendment rights in that it would compel him to give self-incriminating testimony. Subsequently, the government filed a motion before Judge Nye to reverse or vacate the magistrate judge’s order. Id. at *2.

Before turning to the merits of the government’s motion, Judge Nye first addressed whether the motion was moot under the circumstances. The ability to unlock a cellphone with a fingerprint expires after 48 hours of not unlocking it (after that point a passcode is required). In this case, the 48-hour window had already passed when the government filed its motion, so even if the government had obtained the warrant, it would not have been able to unlock the individual’s phone using his fingerprint. The government argued, however, that two exceptions to the mootness doctrine applied that made the motion justiciable. Namely, the government claimed that (1) the issue implicated by its motion fell within the “capable of repetition, yet evading review” exception to the mootness doctrine, and (2) its motion was justiciable because there was a split of authority in the opinions issued by magistrate judges in the district on this matter.

As to the first exception, Judge Nye explained that under Ninth Circuit precedent, the “capable of repetition, yet evading review” exception to the mootness doctrine applies only where “(1) the challenged action is in its duration too short to be fully litigated prior to cessation or expiration, and (2) there is a reasonable expectation that the same complaining party will be subject to the same action again.” In this case, Judge Nye reasoned, because the prevalence of cellphone use continues to rise — and the government’s applications for warrants to compel fingerprinting also continue to rise — and given that a search warrant must be processed within 48 hours of the government’s seizure for the fingerprinting search warrant to be effective, the “capable of repetition, yet evading review” exception applied. Id. at *3. The court expressed reluctance, however, about relying on the “split of authority” exception to the mootness doctrine because, in the court’s view, it was unclear whether “there is a reasoned split of opinion between the magistrate judges in this District.”

With the justiciability question resolved, Judge Nye then turned to the substance of the government’s motion. According to the court, “[t]he compelled unlocking of digital devices using biometric means is an emerging area of law that raises both Fourth and Fifth Amendment concerns.” And, as of the date of this opinion, “neither the United States Supreme Court [n]or any other federal circuit court have addressed this issue.” Without binding precedent on the issue, the court considered judicial opinions on the subject from around the country. See id. at *4-*6.

Following this review, the court ultimately ruled, “in accordance with a majority of Courts that have weighed in on this issue,” that the warrant here did not implicate the thought processes of the individual (indeed, law enforcement agents would select the fingers to be pressed to the cellphone’s sensor). As a result, the requested warrant would not compel the individual to provide self-incriminating testimonial evidence and, thereby, did not violate the Fifth Amendment. Id. at *7. As the court explained, “[t]he application of the fingerprint to the sensor is simply the seizure of a physical characteristic, and the fingerprint by itself does not communicate anything.” Judge Nye also noted that there was no need to address the Fourth Amendment arguments the parties raised because “[b]y determining that the Government would not violate the Fifth Amendment by placing a defendant’s finger on a cellphone sensor,” this type of “ ‘search and seizure’ would likewise comport with the Fourth Amendment’s reasonableness requirement.” Id. at *7 n.8. Accordingly, Judge Nye granted the government’s motion and vacated the magistrate judge’s order denying the requested search warrant. Id. at *7.

4. In Simmons v. Safeway, Inc., 2019 WL 2375418 (W.D. Wash. June 5, 2019), Judge Robert J. Bryan granted a Fed. R. Evid. 612 motion to compel plaintiff to produce a document drafted by plaintiff’s counsel because counsel used the document to refresh plaintiff’s memory in advance of a deposition.

In this employment discrimination litigation, plaintiff testified at her deposition that she reviewed a document prepared by her counsel to refresh her memory regarding the events at issue in the litigation. Id. at *2. After defendant asked about the contents of the document, plaintiff’s counsel instructed plaintiff not to answer on the grounds of the attorney-client privilege and work product doctrine. Plaintiff did testify, however, that the document was based on her own handwritten notes made before she ever consulted with an attorney. Plaintiff’s counsel had taken those notes, typed them up and reorganized them. Plaintiff further testified that typed notes prepared by counsel were not different in any substantive way from the handwritten notes.

Following the deposition, plaintiff produced a copy of the handwritten notes but refused to produce a copy of the typed version prepared by counsel. Defendant moved to compel, asking Judge Bryan to order plaintiff to produce the typed version of the document and to continue plaintiff’s deposition.

Judge Bryan ruled that plaintiff must produce the typed version of the document. Id. at *3. Fed. R. Evid. 612 provides that an adverse party is entitled to a document used to refresh a witness’s memory and to cross-examine the witness regarding the document. While the Ninth Circuit had not previously considered the interplay between Fed. R. Evid. 612 and privilege, Judge Bryan applied a three-part test from the Third Circuit to determine whether a party may obtain a document used by a witness prior to testifying. Id. (citing Sporck v. Peil, 759 F.2d 312, 317 (3d Cir. 1985)). Under that test, “1) the witness must use the writing to refresh his memory; 2) the witness must use the writing for the purpose of testifying; and 3) the court must determine that the production is necessary in the interests of justice.” Id. (quoting Sporck, 759 F.2d at 317). 

In this case, Judge Bryan found that the document in question satisfied all three criteria. Id. at *4. It was undisputed that plaintiff used the document to refresh her memory in advance of her deposition testimony. Further, production was necessary and in the interests of justice because defendant needed the document to “effectively cross-examine” plaintiff, as plaintiff’s testimony was the primary evidence offered in support of her claims. Plaintiff argued that the document was protected by the attorney-client privilege and work product doctrine. But Judge Bryan concluded that any privilege had been waived. In addition, he held that plaintiff’s deposition should be continued to permit defendant to question her regarding the document and that an award of attorney’s fees would be unjust in this case.