Maryland Intellectual Property Lawyer & Attorney : Brian Wm. Higgins : Serving Baltimore, Columbia, Frederick

     Below is a Wordle based on the last several months worth of posts on this website.  A Wordle is a “word cloud” generated from text in which greater prominence is given to words that appear more frequently in the source text.  In the Wordle below, one can see that the words "patent," "Maryland," "district," "court," and "judge" have found their way into the posts on this website more frequently than other words.

     Jonathan Feinberg of IBM Research is credited for providing the on-line Wordle tool.

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     In Victor Stanley, Inc. v. Creative Pipe, Inc., No. 06-2662 (D. Md. May 29, 2008), U.S. Chief Magistrate Judge Grimm describes the proper means for asserting that documents are protected or immune from discovery because of the attorney-client privilege or attorney work product doctrine. Judge Grimm's explanation comes at the end of his opinion in Victor Stanley, published two weeks ago.

The Issue

     Because a party responding to a Rule 34 request for the production of discovery is entitled to refuse to produce documents if they are privileged or work product protected, Judge Grimm pointed out that the Federal Rules of Civil Procedure require that when doing so, the responding party must “describe the nature of the documents, communications, or tangible things not produced or disclosed--and do so in a manner that, without revealing information itself privileged or protected, will enable other parties to assess the claim.” The most common way to do this, he wrote, is by using a privilege log, which identifies

1. Each document withheld,
2. Information regarding the nature of the privilege/protection claimed,
3. The name of the person making/receiving the communication,
4. The date and place of the communication, and
5. The document’s general subject matter.

What Really Happens?

     In actuality, Judge Grimm, who in his position as Magistrate referees all kinds of discovery disputes, found that lawyers infrequently provide all the basic information called for in a privilege log, and if they do, it is usually so cryptic that the log falls far short of its intended goal of providing sufficient information to the reviewing court to enable a determination to be made regarding the appropriateness of the privilege/protection asserted without resorting to extrinsic evidence or in camera review of the documents themselves. Few judges, he said, find that the privilege log is ever sufficient to make the discrete fact-findings needed to determine whether a privilege/protection was properly asserted and not waived.

What Should Lawyers Be Doing? 

     According to Judge Grimm, parties should be wary of filing a response to a Rule 34 document production request that asserts privilege/protection as a basis for refusing to make requested production without having a factual basis to support each element of each privilege/protection claimed for each document withheld, because doing so is a sanctionable violation.

     Insuring that a privilege or protection claim is properly asserted in the first instance and maintained thereafter involves a several step process, Judge Grimm wrote.

(1)  First, pursuant to FRCP 26(b) (5), the party asserting privilege/protection must do so with particularity for each document, or category of documents, for which privilege/protection is claimed.

(2)  After that, if the requesting party challenges the sufficiency of the assertion of privilege/protection, the asserting party may no longer rest on the privilege log, but bears the burden of establishing an evidentiary basis–by affidavit, deposition transcript, or other evidence– for each element of each privilege/protection claimed for each document or category of document. A failure to do so warrants a ruling that the documents must be produced because of the failure of the asserting party to meet its burden.

(3)  If the asserting party makes this showing, and the requesting party still contests the assertion of privilege/protection, then the dispute is ready to submit to the court, which, after looking at the evidentiary support offered by the asserting party, can either rule on the merits of the claim or order that the disputed documents be produced for in camera inspection.

Result

     In Victor Stanley, Judge Grimm said that had he not ruled that Defendant's 165 inadvertently produced documents waived the privilege/protection status of the documents, then the effect of a failure by the Defendants to comply with the court’s order regarding the proper manner in which to assert privilege/protection would have warranted an order to produce the materials for failure to carry the burden of demonstrating the existence of the privilege/protection claimed. 

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     U.S. Chief Magistrate Judge Paul W. Grimm is a leading jurist in the field of electronic discovery. In Victor Stanley, Inc. v. Creative Pipe, Inc., No. 06-2662 (D. Md. May 29, 2008), Judge Grimm discusses the approach the U.S. District Court for the District of Maryland may take when deciding whether the inadvertent production to an adversary of attorney-client privileged or work-product protected materials constitutes a waiver.

Background

     In Victor, the parties entered into a joint protocol to search and retrieve relevant ESI responsive to Plaintiff’s Rule 34 requests.  After the protocol was used to retrieve responsive ESI, Defendants reviewed the documents to locate any that were privileged or attorney work-product prior to production to Plaintiff. Defendants had previously expressed concern that privilege review of the responsive documents would delay production unnecessarily and cause undue expense. To address this concern, Defendants gave their computer forensics expert a list of keywords to be used to search and retrieve privileged/protected documents. However, Defendants also acknowledged the possibility of inadvertent disclosure of privileged/protected documents, and requested that the court approve a “clawback agreement.” Later, Defendants notified the court that because Judge Garbis had extended the discovery deadline by four months, Defendants would be able to conduct a document-by-document privilege review, thereby making a clawback agreement unnecessary.

     After receiving Defendants’ ESI production in September, 2007, Plaintiff began their review of the materials. They soon discovered documents that potentially were privileged or work-product protected, and immediately segregated this information and notified Defendants.

Applicable Law

     As noted by Judge Grimm, courts have taken three different approaches when considering inadvertent production. The Fourth Circuit Court of Appeals has yet to decide which approach it will follow, although individual district courts within the circuit, Grimm notes, have adopted the intermediate balancing approach. Under the intermediate approach, the court balances a number of factors to determine whether the producing party exercised reasonable care under the circumstances to prevent against disclosure of privileged/protected information, and if so, there is no waiver. The intermediate test requires the court to balance the following factors to determine whether inadvertent production of attorney-client privileged materials waives the privilege:

(1) the reasonableness of the precautions taken to prevent inadvertent disclosure;

(2) the number of inadvertent disclosures;

(3) the extent of the disclosures;

(4) any delay in measures taken to rectify the disclosure; and

(5) overriding interests in injustice.

     Judge Grimm commented that decisions of the Fourth Circuit suggest that it is inclined to adopt the strict approach. Under the strict approach, there is a waiver because once disclosed there can no longer be any expectation of confidentiality.

Discussion

    Under the strict approach, Judge Grimm found there was no legitimate doubt that Defendants’ production of 165 asserted privileged/protected documents waived the attorney-client privilege and work-product protection.

     However, even under the intermediate test, the result would be the same, he said. Below are some of the key points in Victor.

     Keyword searches: Selection of the appropriate keyword search and information retrieval technique requires careful advance planning by persons qualified to design effective search methodology, Judge Grimm wrote. The implementation of the methodology selected should be tested for quality assurance; and the party selecting the methodology must be prepared to explain the rationale for the method chosen to the court, demonstrate that it is appropriate for the task, and show that it was properly implemented. Compliance with the Sedona Conference Best Practices for use of search and information retrieval will go a long way towards convincing the court that the method chosen was reasonable and reliable, which, in jurisdictions that have adopted the intermediate test for assessing privilege waiver based on inadvertent production, may very well prevent a finding that the privilege or work-product protection was waived.

     In Victor, Judge Grimm found that the Defendants failed to demonstrate that the keyword search they performed on the text-searchable ESI was reasonable. Defendants failed to provide the court with information regarding the keywords used; the rationale for their selection; the qualifications of Defendant and attorneys to design an effective and reliable search and information retrieval method; whether the search was a simple keyword search, or a more sophisticated one, such as one employing Boolean proximity operators;  or whether they analyzed the results of the search to assess its reliability, appropriateness for the task, and the quality of its implementation.

     Non-Waiver Agreement: As noted above, Defendants voluntarily abandoned their request for a court-approved non-waiver agreement, and advised the court that they did not need this protection. Instead, they elected to do a document-by-document privilege review. According to Judge Grimm, had Defendants not abandoned their request, they would have been protected from waiver. When they undertook an individualized review of the context-searchable ESI and determined that they could only review the title pages, they neither sought an extension of time from the court to complete an individualized review, nor did they reinstate their request for a court-approved non-waiver agreement, despite their awareness of how it would have provided protection against waiver.

Comments:

• In Lorraine v. Markel American Insurance Co. , 241 F.R.D. 534 (D. Md. 2007), Judge Grimm outlined evidentiary rules that must be considered when ESI is proffered to the court during litigation. The 100+ page opinion discusses considerations given to the relevancy, authentication, and probative value of ESI
  
  
• Lorraine followed on the heels of the U.S. District Court for the District of Maryland’s Suggested Protocol for Discovery of Electronically Stored Information (2007), also written, to a large degree, by Judge Grimm (see related link on this blog: Maryland District Court Magistrate Judge Grimm Offers Insight Into E-Discovery)
  
  
• For more on Victor, see:
  • On The Record Blog: E-Discovery errors take toll on judges, too
    
    
  • EDD Update (Law Technology News/Law.com): Grimm Prognosis for ESI Search
    
    
  • The Daily Record: E-Discovery Error Waivers Attorney-Client Privilege

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          Many authorities and experienced litigators recognize that the discovery of electronic documents and information has become the centerpiece of every civil litigation. The reason for all the attention? In December 2006, the Federal Rules of Civil Procedure were amended to specifically require e-discovery in the conduct of civil litigation. Unfortunately, as Maryland District Court Magistrate Judge Paul W. Grimm pointed out during a recent LEXIS webinar, the new e-discovery rules are not self executing. To address that short-coming, the Federal District Court for the District of Maryland recently published what amounts to a user’s guide to e-discovery. Entitled Suggested Protocol for Discovery of Electronically Stored Information, the guide provides a comprehensive list of topics and issues that lawyers should consider before and during the initial meet-and-confer conference required under the e-discovery rules, as well as during the collection and production of electronically stored information (ESI) to opposing parties.

          The stated purpose of Maryland's Protocol is "to facilitate the just, speedy, and inexpensive conduct of discovery involving ESI in civil cases, and to promote, whenever possible, the resolution of disputes regarding the discovery of ESI without Court intervention.” Magistrate Judge Grimm is the lead proponent of the Protocol, which is characterized as a working model that has not yet been adopted by the Maryland District Court.

          Notably, the Protocol states that "If a party is not reasonably prepared for the Fed.R.Civ.P. 26(f) Conference of Parties in accordance with the terms of this Protocol, that factor may be used to support a motion for sanctions by the opposing party for the costs incurred in connection with that Conference." Judge Grimm commented that counsel seeking the District Court's intervention in e-discovery disputes will be in a better position to argue the merits of their motion to compel if they can establish that they tried to follow the Protocol but were rebuffed by opposing counsel.

Comments:

• Maryland’s Protocol should be embraced by attorneys planning for and conducting e-discovery during litigation in Maryland, because little guidance is currently available in the form of court orders and opinions concerning how to complying with the 2006 e-discovery rules (several district courts have adopted local rules addressing e-discovery, but I am not aware of any other court that provides nearly the same level of guidance as Maryland's Protocol).
  
  
• Like other District Courts (e. g., New Jersey and Delaware), the Protocol suggests that counsel engage the help of an information technology/information management (IT/IM) liaison to help with e-discovery. That should be welcome news to the expanding e-discovery forensic evidence industry that popped up as a result of the 2006 e-discovery rules. Many of the private companies that provide e-discovery services offer plenty of informational resources for lawyers involved in e-discovery.
  
  
• One of the interesting features of the Protocol is the division of non-apparent or meta-data associated with almost all electronic data into three categories: System Meta-Data, Substantive Meta-Data, and Embedded Meta-Data. The distinction will be meaningless, of course, if the parties agree not to exchange meta-data.
  
  
• For a general overview of e-discovery from a practical perspective, see the author's article: E-Discovery: An Environmental Professional's Guide. ELR (August 2007).

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