March 02, 2017 Articles

New Ideas to Make Discovery Effective and Efficient

By Jenny L. Colgate

Junior lawyers are frequently given the task of preparing first drafts of discovery documents. Often, to be as efficient as possible (and to avoid making mistakes), the junior lawyer simply pulls up a similar document from a past case and uses it as a template for preparing the draft. There is nothing wrong with this. Being efficient is important. But sometimes, it is more efficient to spend some extra time rethinking common practices.

One way to make a big impact early on in litigation is to think outside the box when assigned a simple task such as “prepare the first draft of the proposed discovery order” or “prepare the first draft of document requests.” The result could save the client money, foster a better relationship with opposing counsel, and even save the court time by eliminating discovery disputes. It could also save you time in the long run, not to mention earning you “bonus points” in your firm for being creative and strategic.

Let’s start with the Rule 26(f) conference. During the Rule 26(f) conference, the parties are supposed to develop a proposed discovery plan. The Federal Rules do not provide a lot of guidance on exactly what must be discussed relating to the discovery plan, and a lot of courts also do not offer much, or any, guidance on this. Consequently, my experience has been that a lot of Rule 26(f) conferences are just plain awkward. The parties slowly walk through the Federal Rules regarding initial disclosures, interrogatories, document requests, and so forth, and more times than not, they agree just to follow what the rules say. Nobody wants to reveal much about her client’s case to the other side. Rarely does anyone give much thought in advance of the conference to the way discovery in the case will play out, let alone whether creative practices should be adopted to reduce discovery disputes or to provide for a more efficient resolution of those disputes when they do occur.

I find that sending an agenda to the other side in advance of the Rule 26(f) conference not only makes the call proceed more smoothly, but also helps cultivate conversation that leads to creative solutions. Topics that I sometimes include on agendas include:

1. Discovery limits or changes to the Federal Rules, such as limits on the number of requests and interrogatories, deposition limits, etc.

2. Discovery cutoff dates, which oftentimes vary for different categories of discovery/documents.

3. Electronic discovery:

• Email: How many email accounts will be searched, and how and when will those searches be done? If by keyword, when will those keywords be determined and by whom?

• Non-email: How many custodians and locations will be searched, and how and when will those searches be done? If by keyword, when will those keywords be determined and by whom?

• Are any electronic systems unavailable for searching, or available only for a limited period of time?

• Metadata: Do the parties maintain it, and if so, dating back to what year? Will it be produced, and if so, what metadata will be produced?

• Source code: Is it relevant? Will it be produced, and if so, when, where, and how will it be produced?

• Core technical documents: What does each side consider them to be?

While some of these topics are specific to patent litigation, most will be important in any complex case.

Another item to discuss during a Rule 26(f) conference is whether the parties will agree to discuss all discovery disputes, in the first instance, by telephone. Raising this at the Rule 26(f) conference signals to the other side that you want to be reasonable and try to keep costs down for both parties. And usually the other side will agree to this proposal. Letter writing can be very time consuming (and thus expensive). While parties in the trenches of discovery often get caught up in this practice, an early discussion targeted at avoiding letter writing could help both sides save thousands (and thousands) of dollars down the road. It is, of course, important to document in writing all agreements reached during the Rule 26(f) conference. Otherwise, the parties will forget (sincerely or not) such agreements later in the case.

Yet another item to discuss at the Rule 26(f) conference is whether the parties want to have agreed dates when certain types of documents need to be produced. In the field of patent litigation, where I mostly work, local patent rules usually provide deadlines for when certain documents—such as prosecution histories, assignment records, and “core technical documents”—need to be produced. In the District of Delaware, Judge Stark’s Patent Procedures also have a date by which sales figures for the accused products need to be produced, and it is early in the case, at the same time as the core technical documents. This is important, as it provides for transparency regarding the value of the case. (Of course, damages are different from product sales, but they are related).

A discussion regarding what types of documents should be produced by what dates (rather than just a “close of fact discovery” deadline) also provides a forum for the parties to be up front with each other about the time it may take to provide certain discovery. For example, financial discovery may take a little longer because it requires accessing an archived accounting system. It is better for this to come up during an early phone call setting a deadline for financial discovery than to exchange written discovery requests, followed by deficiency letters, followed by meet and confers, only to learn several months in that indeed the other side has been working diligently to get the information, but the information is time consuming to access.

Also consider floating the idea of informal discovery at a Rule 26(f) conference. While detailed discussions of informal discovery may require follow-up conferences, my experience has been that when both sides are willing and able, informal discovery can save a lot of time and effort.

Document requests/production is one area where informal discovery may be an option. In other words, the parties could discuss eliminating document requests altogether (as the Eastern District of Texas has done) and instead just reach an agreement as to the categories of documents that should be collected and produced. This could save a client a lot of attorney time and money that would otherwise be spent crafting document requests, objecting and responding to the other side’s document requests, and engaging in discovery disputes, including extensive letter writing, meet and confers, motion practice, and/or conferences with the court.

In many of my cases, I have prepared early Rule 30(b)(6) deposition notices regarding such topics as document storage and collection and corporate organization, to help inform our discovery strategy. In some cases, it may be possible to avoid those depositions by setting up a conference call where each side reveals this information on an informal basis. For example, we will tell you the types of documents we have and how they are kept if you tell us the types of documents you have and how they are kept. Of course, there are confidentiality issues, but if such a conference is limited to outside counsel and a protective order is in place, such voluntary disclosure of information should be no different confidentiality-wise from a deposition.

For written discovery, nothing requires the “traditional format” to be used. When preparing responses to written discovery, I often put the general objections at the end, even though the traditional format is to put them up front. I think this makes for a cleaner document. (I usually drop a footnote early in the document stating that the general objections are at the end, just so opposing counsel does not overlook them.)

Also, when I prepare specific objections to individual discovery requests, I like to number the objections (e.g., “First, Plaintiffs object on grounds that the request is unduly burdensome. Second, Plaintiffs object on grounds that the request calls for information that may be protected by the attorney-client privilege. . . .”). I find that this makes it easier to locate specific objections when skimming the document later in the case, for instance, if a discovery dispute has arisen.

Something I have yet to do in discovery, but that would be worth trying, is agreeing to a set of instructions and a set of terms/definitions early in a case that would apply to all written discovery. Think about it: every time a party goes to prepare a set of written discovery, it prepares a list of instructions and a list of terms and definitions (or incorporates previous ones by reference). The other side receives the request and spends time and effort reviewing lists, comparing the lists to previous lists, and objecting to anything even remotely objectionable. Before long, the shoe is on the other foot: the second party prepares its discovery (including lists of instructions and terms and definitions), and the first party reviews and objects to those lists (sometimes on the same grounds that the second party objected to the first party’s lists). While in some cases, no doubt, this whole exercise is extremely worthwhile and real ground is gained, in the majority of cases, it is a time suck. I wonder what would happen if the parties sat down at the beginning of discovery and ironed out a set of agreed-to instructions and terms/definitions that would apply across all written discovery. Of course, it is possible that some terms could not be agreed to, or new terms might arise later in the case that the parties did not think of at the initial conference, but those issues could be addressed. For the majority of terms where agreement could be reached early in the case, there would be clarity. No more time would be spent including or objecting to these terms and definitions.

I also wonder whether objections to written discovery could be done in a more efficient way. While there are unique objections that sometimes need to be made for a particular request, oftentimes the same objections are repeated again and again throughout responses to a set of discovery: privileged or attorney work product; overbroad and unduly burdensome; beyond the scope of Federal Rule of Civil Procedure 26(b)(1); vague; outside of my client’s possession, custody, and control; etc. A lot of time could probably be saved by preparing a chart of objections, which could be attached to one’s responses as an exhibit. For example:

Request for Production Number

Attorney-Client Privilege

Work Product

Overbroad and Unduly Burdensome

Vague

Beyond Scope of Fed. R. Civ. P. 26(b)(1)

Outside Defendant’s Possession, Custody, and Control

1

X

X

X

 

X

 

2

 

 

 

X (e.g., “related”)

 

 

3

 

 

X

 

 

X

Such a chart would probably be easier to prepare, edit, and amend than written objections. It would also be useful for comparing objections across various requests. Further, it would result in written discovery responses that are cleaner. No longer would there be a request, followed by a huge paragraph of objections, followed by a response—rather, it would just be a request, an incorporation of the objections set forth in the chart, and a response.

I hope I have inspired you to put on your own “thinking hat” and see what other creative discovery practices you can come up with. Being effective and efficient in discovery does not necessarily mean simply copying those who came before you.


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