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

  1. a ruling from the U.S. District Court for the Southern District of New York compelling one of the defendants to produce “earlier in time” emails from email threads and addressing how email threads may be handled on the parties’ privilege logs
  2. an order from the U.S. District Court for the District of Kansas denying a motion to add plaintiffs’ outside counsel to plaintiffs’ list of document custodians for discovery purposes
  3. a decision from the U.S. District Court for the Eastern District of New York denying a motion to compel a forensic examination of plaintiff’s cell phone based on alleged alteration of metadata for certain video files from the cell phone that were produced by plaintiff during discovery
  4. an opinion from the U.S. District Court for the District of Connecticut denying a motion to suppress evidence from a cell phone where the warrant pursuant to which the cell phone had been seized broadly covered the entire contents of the cell phone and the government did not conclude the search of the cell phone until 47 days after the seizure

1. A ruling from the U.S. District Court for the Southern District of New York compelling one of the defendants to produce “earlier in time” emails from email threads and addressing how email threads may be handled on the parties’ privilege logs.

In In re Actos Antitrust Litigation, No. 1:13-cv-09244 (RA) (SDA), --- F.R.D. ----, 2022 WL 949798 (S.D.N.Y. March 30, 2022), U.S. Magistrate Judge Stewart D. Aaron addressed a motion to compel one of the Defendants to produce “earlier in time” emails that were included in threaded emails defendants already produced.

In this antitrust class action alleging that Defendants prevented competitors from timely marketing a generic drug, the parties had entered into a protocol for the production of electronically stored information (ESI) in native format that required the parties to de-duplicate the ESI produced but did not address the production of only the most inclusive email threads. Id. at *1. In making its productions, the Defendant against whom the motion to compel was brought used email threading, “by which a party reviews and produces the most-inclusive email in a thread.” Plaintiffs objected to this format of production and sought to compel Defendant to produce “earlier-in-time emails” as well as the metadata associated with those emails.

Magistrate Judge Aaron began by noting that the parties’ dispute highlighted the importance of negotiating a comprehensive ESI protocol before data production is undertaken. Id. at *2. He explained that the parties’ ESI protocol did not expressly permit the use of email threading, nor do the Federal Rules of Civil Procedure or the local rules of the court contain any provisions regarding the use of email threading. Magistrate Judge Aaron also noted that the Sedona Principles encourage parties to have “early discussions” regarding “procedural issues relating to the form of production” and to enter into an “agreed upon protocol governing the production of ESI and avoid downstream misunderstandings or disputes.” Id. (quoting The Sedona Principles, Third Edition: Best Practices, Recommendations & Principles for Addressing Electronic Document Production, 19 Sedona Conf. J. 1, Comment 3.c. (2018)).

Magistrate Judge Aaron stated that it is not uncommon for ESI protocols to address the use of email threading, and Plaintiff had pointed to prior litigation in which Defendant had agreed to an ESI protocol that addressed email threading. Id. at *3. But the parties did not address email threading in this case.

Magistrate Judge Aaron found that Defendant’s exclusion of lesser included emails from production resulted in the exclusion of the metadata associated with earlier emails in a chain and that this exclusion materially reduced Plaintiffs’ ability to search for all correspondence within a date range. In particular, he found that excluding lesser included emails resulted in the recipients of some such emails not being identified and that it resulted in the loss of information identifying who was blind copied on lesser included emails even though this information was among the metadata the parties agreed to produce. In this regard, Magistrate Judge Aaron noted that the parties could have included in the ESI protocol provisions for the production of metadata to resolve these issues, but Plaintiffs were not provided the opportunity to negotiate how email threading might be accomplished in an acceptable manner. 

Ultimately, Magistrate Judge Aaron declined to impose email threading on Plaintiffs. Even though he recognized that production of earlier-in-time emails would cause some additional burden on Defendant, he found that any additional burden is not undue as Defendant agreed to the ESI protocol and likely already had reviewed many of the emails at issue. Accordingly, Magistrate Judge Aaron ordered Defendant to produce all responsive ESI to Plaintiffs, including earlier-in-time emails.

Magistrate Judge Aaron also provided guidance regarding a dispute between the parties regarding how email threads should be identified on privilege logs. He noted that the local rules of the court, specifically Local Civil Rule 26.2(c), provides that “when asserting privilege on the same basis with respect to multiple documents, it is presumptively proper to provide the information required by this rule by group or category.” Id. at *4. Magistrate Judge Aaron also quoted at length from the committee note to this local rule, including that “[b]ecause the appropriate approach may differ depending on the size of the case, the volume of privileged documents, the use of electronic search techniques, and other factors, the purpose of Local Civil Rule 26.2(c) is to encourage the parties to explore methods appropriate to each case.”

Based on these principles, Magistrate Judge Aaron concluded that categorical privilege logs are appropriate and that such a log is adequate “if it provides information about the nature of the withheld documents sufficient to enable the receiving party to make an intelligent determination about the validity of the assertion of the privilege.” He further noted that Plaintiffs’ proposal of permitting categorical logging of emails only where all emails “involved the same participants and subject matter” would not be appropriate, nor would Defendant’s proposal of only logging the threaded emails together.

2. An order from the U.S. District Court for the District of Kansas denying a motion to add plaintiffs’ outside counsel to plaintiffs’ list of document custodians for discovery purposes.

In Orchestrate HR, Inc. v. Blue Cross and Blue Shield of Kansas, Inc., No. 19-cv-4007-HLT-TJJ, 2022 WL 834066 (D. Kan. Mar. 21, 2022), U.S. Magistrate Judge Teresa J. James denied Defendant’s motion to add plaintiffs’ outside counsel to Plaintiffs’ list of document custodians for discovery purposes.

Defendant’s motion asked the court to revisit an earlier ruling that Plaintiffs’ outside counsel of record, Jose Portela, was not a proper custodian. Id. at *1. Defendant argued that documents produced by Plaintiffs and nonparties, as well as Defendant’s own documents, indicated that Portela was personally and significantly involved in specific elements of newly pleaded claims. Specifically, Defendant described business communications between Portela and third parties directly relating to issues falling within Defendant’s discovery requests. Portela asked the court to require Defendant to “identify any of the communications counsel was describing that” involved only Portela and not his employer because Plaintiffs would likely drop any claim based on those communications. Magistrate Judge James obliged, stating that Defendant’s motion “would need to identify the specific communications that provide the support for Defendant’s request.”

Laying out the legal standard, Magistrate Judge James emphasized the importance that discovery, in particular discovery of ESI, is proportional to the needs of the case. She stated that “[t]he proportionality standard requires consideration of the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit.” Magistrate Judge James noted here that early in the litigation, the parties agreed to confer in good faith regarding the identities of ESI custodians in light of these challenges.

Magistrate Judge James then commented that relatively little legal authority existed regarding motions to compel the designation of an additional ESI custodian but that The Sedona Principles, Third Edition provided four key principles that informed the analysis. Id. at *2. First, “determining what is relevant and proportional under the circumstances for each matter often requires a highly fact specific inquiry.” Second, absent agreement among the parties, the party who will be responding to discovery requests is entitled to select the custodians it deems “most likely to possess responsive information and to search the files of those individuals.” Third, unless the party’s choice is “manifestly unreasonable or the requesting party demonstrates that the resulting production is deficient,” the court should not dictate the designation of ESI custodians. Fourth, the party seeking to compel the designation of a particular additional ESI custodian has the initial threshold burden of showing that the disputed custodian's ESI likely includes information relevant to the claims or defenses in the case. This is because the party responding to discovery requests is typically in the best position to know and identify those individuals within its organization likely to have information relevant to the case.

Magistrate Judge James noted that Defendant’s motion was based not on an exception to attorney client privilege but that Portela had access to, or was actively involved in, hundreds of relevant communications related to new claims in Plaintiffs’ complaint. Id. at *3. Magistrate Judge James rejected Defendant’s suggestion that the circumstances had significantly changed since its previous attempt to make Portela a custodian. Magistrate Judge James observed that Defendant failed to enumerate any such communication that involved solely Portela and Defendant and misquoted a paragraph in Plaintiffs’ complaint in its argument that there were “hundreds” of pertinent communications. She further observed that Plaintiffs added no new causes of action to the complaint and relied on no new exhibits or documents other than four documents produced by Defendant. Magistrate Judge James therefore concluded that the circumstances had not changed since the court’s last ruling that Portela would not be a custodian.

Magistrate Judge James then examined Portela’s alleged personal and significant involvement in the underlying subject matter of the case. She found Defendant’s assertion that there were more than 150 communications between Portela with no other Plaintiff representative as sender or recipient unmeaningful, given the length of time Portela had represented Plaintiffs. Id. at *3-*4. Additionally, none of the referenced 150 communications indicated significant involvement in the facts; many did not predate the litigation itself, and over half involved the scheduling of conference calls.

Magistrate Judge James also rejected Defendant’s argument that because Portela was not a named custodian, no searches between Portela and relevant entities had been conducted. To the contrary, Plaintiffs had produced over 600 documents with Portela as the custodian. Further, Defendant had made a number of exaggerated claims to support its argument; in one example, Defendant claimed that over the course of a year, Portela was in “constant communication” with Defendant regarding the submission of insurance claims, but the underlying emails Defendant referenced were all written over a two-week period. Magistrate Judge James also rejected Defendant’s argument that Portela was Plaintiffs’ primary representative, noting that the attachment to one of Plaintiffs’ exhibits indicated that the Kansas Department of Insurance had refused to disclose any information to Portela. Id. at *5. Magistrate Judge James then concluded that adding Portela to the list of record custodians would not be proportional to the needs of the case and that Defendant had not shown why Plaintiffs’ productions were deficient due to Portela’s not having been a records custodian.

Magistrate Judge James noted that while the finding of lack of proportionality was sufficient reason to deny Defendant’s motion, the other factors supported denial as well. The second factor posits that the responding party is entitled to select its own custodians absent an agreement between the parties to the contrary. Because Plaintiffs must supplement or correct any of their initial disclosures if additional or corrective information arises that had not been disclosed during discovery, they would be obligated to conduct a search of Portela’s emails if necessary, but otherwise were not under an obligation to do so. Under the third factor, a court should not dictate the designation of ESI custodians unless the party’s choice is manifestly unreasonable or the requesting party demonstrates that the resulting production is deficient. Magistrate Judge James pointed to her prior analysis that Defendant had not done so. The fourth factor states that the party seeking to compel the designation of a particular ESI custodian has the initial threshold of showing that the disputed custodian’s ESI likely includes information relevant to claims or defenses in the case. Magistrate Judge similarly pointed to her prior analysis to dismiss this factor.

Magistrate Judge James then held that Defendant had not met its burden to demonstrate that Portela should be added to the Plaintiffs’ custodian list absent agreement of the parties and denied Defendant’s motion. Id. at *6.

3. A decision from the U.S. District Court for the Eastern District of New York denying a motion to compel a forensic examination of plaintiff’s cell phone based on alleged alteration of metadata for certain video files from the cell phone that were produced by plaintiff during discovery.

In Aminov v. Berkshire Hathaway Guard Insurance Companies, 21-CV-479-DG-SJB, 2022 WL 818944 (E.D.N.Y. Mar. 3, 2022), U.S. Magistrate Judge Sanket J. Bulsara denied a motion to compel Plaintiff to produce his cell phone for forensic examination based on alleged alteration of metadata for certain video files Plaintiff produced during discovery.

Magistrate Judge Bulsara began his analysis by noting that “[f]orensic examinations of computers and cell phones are generally considered a drastic discovery measure because of their intrusive nature.” Id. at *1. In this regard, Magistrate Judge Bulsara cited the Advisory Committee’s note to Rule 34(a) to the effect that “[i]nspection or testing of certain types of electronically stored information or of a responding party’s electronic information system may raise issues of confidentiality or privacy” and that “[c]ourts should guard against undue intrusiveness resulting from inspecting or testing such systems.” He further noted that compelled forensic imaging is not appropriate in all cases and that courts must consider the significant interests implicated by forensic imaging before ordering such procedures. Id. (citing John B. v. Goetz, 531 F.3d 448, 460 (6th Cir. 2008)).

Magistrate Judge Bulsara stated that in situations where a party can show improper conduct on the part of the responding party, a forensic examination may be appropriate. For example, discrepancies or inconsistencies in the responding party’s discovery responses may justify a party’s request to allow an expert to create and examine a mirror image of a hard drive. Magistrate Judge Bulsara further noted that courts have ordered computer imaging when there is reason to believe that a litigant has tampered with the computer or hidden relevant materials that are the subject of court orders. However, he stated that there must be good cause to order computer imaging or similar forensic examinations when a party has already produced the electronic information sought in a native format.

Magistrate Judge Bulsara found that there was no such justification to order forensic imaging in this case. Id. at *2. First, he noted that the Defendants’ motion was based on “misplaced and unsupported speculation” that the metadata for the video at issue was altered. Defendant’s counsel had used a free online metadata tool to analyze the video file, but Defendant provided no information about the reliability of the online tool. Moreover, Defendant’s conclusions regarding the metadata were based on the “less-than-unequivocal statement” produced by the online tool that “Metadata could have been changed or deleted in the past.” Magistrate Judge Bulsara noted that “this is hardly the kind of analysis or support that provides a reasonable basis either to conclude that there was alteration of metadata or to warrant forensic examinations.”

Magistrate Judge Bulsara also found that the online tool used by the Defendant was not designed to show alteration of metadata but instead to determine whether metadata exists. He noted that the tool’s website described the tool as one that “allows you to access the hidden ... meta data of your files.” In other words, the online tool reveals metadata, and therefore — at best — it may have revealed that videos were produced without metadata. Magistrate Judge Bulsara further noted that the message that the metadata “could have been changed or deleted” appears automatically for every file that is analyzed by the tool, as a means of liability protection for the company operating the website, and that it was not specific to Plaintiff’s video. According to Magistrate Judge Bulsara, “[t]his is hardly the thing on which one should base a motion to compel.”

Finally, Magistrate Judge Bulsara found that although Defendant’s counsel had spoken to a forensic consultant about the relevant video files, Defendant’s motion did not offer the consultant’s opinion about the website but referred to it only to support the idea that the original phone is necessary for metadata examination. Nor did the consultant opine that Plaintiff’s files had missing or altered metadata. Ultimately, “[s]ince there is no evidence of spoilation or alteration, there is no cause to require forensic examination of the cell phone on the speculation that additional metadata may exist or that the original metadata was altered.”

4. An opinion from the U.S. District Court for the District of Connecticut denying a motion to suppress evidence from a cell phone where the warrant pursuant to which the cell phone had been seized broadly covered the entire contents of the cell phone and the government did not conclude the search of the cell phone until 47 days after the seizure.

In United States v. Harry, U.S. v. Harry, No. 3:21cr98 (JBA), 2022 WL 343963 (D. Conn, Feb 4, 2022), U.S. District Judge Janet Bond Arterton denied one of the Defendant’s motion to suppress evidence derived from a search of his cell phone executed by a warrant (as well as evidence gathered from a pole camera positioned by law enforcement outside of his place of business).

The Drug Enforcement Agency (DEA) intercepted communications between Defendant and the target of an investigation in 2020 and found that Defendant and the target communicated on numerous occasions in furtherance of the alleged drug trafficking conspiracy using a cell phone. Id. at *1. The government obtained a search warrant the day before Defendant’s arrest to seize and search the cell phone Defendant used to speak with the DEA’s target. Id. at *2. The warrant attached a description of the cell phone, the times it might be seized, and the specific records and information on the cell phone to be searched. Upon Defendant’s arrest on June 9, 2021, the police confirmed that his cell phone was the one that was used to communicate with the target. The cell phone was put in airplane mode, and the DEA began its forensic search two days later. On or about July 19, an agent conducted a manual search of the data.

Defendant argued that the evidence obtained from his cell phone should be suppressed because the warrant lacked particularity in violation of the Fourth Amendment. According to the Defendant, the lack of particularity allowed law enforcement to search broad categories of information without temporal limitation, and law enforcement delayed the search for 47 days after the seizure before concluding its search. The government responded that the warrant was sufficiently particular because it “specified the offenses for which there was probable cause, the warrant defined the place to be searched as Defendant’s cell phone …, and it defined the types of information in connection with the suspected offenses sought from the cell phone.” As for the lack of temporal restrictions, the government argued that this did not render a warrant invalid per se and the government was justified due to the scope of conduct under investigation. Finally, the government stated that the delay was not unreasonable as it was executed within the time constraints of Federal Rule of Criminal Procedure 41.

After explaining the general rule for particularity of warrants under the Fourth Amendment, Judge Arterton applied the rule in the context of electronic devices. She stated that courts “must be attuned to the technological features unique to digital media as a whole and to those relevant in a particular case.” Id. at *3 (quoting United States v. Ganias, 824 F.3d 199, 213 (2d Cir. 2016)). She further stated that a warrant may therefore be broad in that “it authorizes the government to search an identified location or object for a wide range of potentially relevant material, without violating the particularity requirement.” Id. (quoting United States v. Ulbricht, 858 F.3d 71, 102-03 (2d Cir. 2017)).

Judge Arterton concluded that the warrant, while broad, did not lack particularity in terms of the data to be searched, pointing to the attachments to the warrant as support. She stated that the first attachment clearly specified the property to be seized as well as the appropriate time and place such seizure may occur. The second attachment limited the warrant to searching data that might reveal evidence that Defendant violated the drug trafficking offenses for which he was a suspect and listed the categories of data that might have revealed this evidence. This included photographs and videos, encrypted communications, contact lists, and notes, records, ledgers, and any documents indicative of drug trafficking.

Defendant argued that the warrant was still defective because it used the phrase “any and all data” throughout as to his specific criminal offenses and thus “impermissibly authorized agents to access locations within his cell phone beyond the scope [of] their stated probable cause.” As an example, Defendant contested the search of photographs, digital notes, and ledgers on his cell phone because no information from the investigation suggested that Defendant had any such documents indicative of drug activity on his phone. Citing United States v. Zemlyansky, Defendant argued that the juxtaposition of a few specific locations in the same warrant authorizing a widespread general search for “any and all data” risked confusing the searching agent.

Judge Arterton was unpersuaded, distinguishing the instant search warrant from the one in ZemlyanskyId. at *4; see U.S. v. Zemlyansky, 945 F. Supp. 2d 438, 460 (S.D.N.Y. 2013). First, the warrant in Zemlyansky did not direct the search officers to seize evidence related to or concerning any particular crime or type of crime and allowed officers to seize any cell phone found at a certain place of business that the officers believed could have been associated with unspecified criminal suspects. Id. (citing Zemlyansky, 945 F. Supp. 2d at 456-459). The Zemlyansky warrant also authorized officers to conduct boundless, discretionary searches of any electronic device found at that location. Id. (citing Zemlyansky, 945 F. Supp. 2d at 458-459). Judge Arterton stated that the warrant at issue had a narrower scope, limiting the search to specific criminal offenses stored on a single device. 

Judge Arterton continued that the phrase “any and all data” did not confer unlimited discretion for officers to search for irrelevant data. She stated that law enforcement had probable cause that Defendant used his cell phone to engage in a drug conspiracy and therefore a reasonable basis to expect the cell phone to have incriminating evidence in many different forms. Judge Arterton further stated that “it will often be impossible to identify in advance the words or phrases that will separate relevant files or documents before the search takes place, because officers cannot readily anticipate how a suspect will store information related to the charged crimes.” Id. (citing Ulbricht, 858 F.3d at 102). The warrant limited officers to searching only the records and information in the cell phone “that constitute evidence and instrumentalities of violations of [distribution of controlled substances, use of a communication faculty, and money laundering].” In areas where a specific criminal statute was not referenced, the warrant still referred to particular criminal conduct, showing that the whole search was based on suspicion of criminal activity and the searches were only pertaining to that activity.

Judge Arterton found that the lack of a time period restricting the relevant data to be searched did not invalidate the warrant because “ [w]hile the lack of temporal limitations in a warrant is considered in evaluating a warrant’s particularity, it is not the sole factor.” Id. (citing United States v. Wey, 256 F. Supp. 3d 355, 388 (S.D.N.Y. 2017)). She added that the “complexity and duration of the alleged criminal activities may diminish the significance of temporal restrictions.” Therefore, while a specific timeframe would have been beneficial, its absence did not invalidate the warrant.

Judge Arterton next rejected Defendant’s argument that the search was unreasonably delayed. Defendant cited to authority from the Second Circuit suggesting that a monthlong delay to apply for a warrant exceeded what was ordinarily reasonable. Id. at *5. While Defendant argued that the issue in that case was the delay in searching a cell phone that had been seized, Judge Arterton disagreed, pointing out that the issue was seizing property pending the issuance of a search warrant. Id. (citing U.S. v. Smith, 967 F.3d 198, 205 (2d Cir. 2020)). She stated that Defendant’s reading of authority was incorrect and did not contemplate delays in searching a cell phone seized pursuant to a valid warrant.

Judge Arterton instead cited the requirements under Federal Rule of Criminal Procedure 41 that law enforcement must execute a warrant within 14 days. Regarding ESI, that time period referred to the seizure or on-site copying of the media or information and not to any later off-site copying or review. Id. (citing Fed. R. Crim. P. 41(e)(2)(B)). Further citing the 2009 Advisory Committee Notes, Judge Arterton explained that the rules acknowledged the need for officers to “seize or copy the entire storage medium and review it later to determine what electronically storied information falls within the scope of the warrant.” Id. (citing Fed. R. Crim. P. 42(e)(2)(B) advisory committee’s notes to the 2009 amendment). She pointed out that the Advisory Committee also noted that practical reality meant that a substantial amount of time could be involved in the forensic imaging and review of information. Judge Arterton stated that the Government’s Rule 41 violation should not be remedied by suppressing evidence unless “(1) there was prejudice in the sense that the search might not have occurred or would not have been so abrasive if the Rule had been followed, or (2) there is evidence of intentional and deliberate disregard of a provision in the Rule.”

Judge Arterton stated that the affidavit supporting the search warrant included information about the amount of time the search would take and noted that the initial search of the cell phone took place the same day it was seized. Id. at *5. The government conducted a more thorough search when it deemed it technically practicable. On this basis, Judge Arterton found the delay reasonable, but even if it was not reasonable, the Defendant had not demonstrated prejudice or that it was the result of intentional and deliberate disregard of a provision in the rule. Therefore, suppression was not appropriate.