*1 On June 29, 2018 the parties filed cross-letter-briefs raising deficiencies each claim exist in the other party’s discovery responses to date. (Dkt. Nos. 135, 136). Novelis and Arconic filed response letter briefs on July 5 and July 6, 2018, respectively. (Dkt. Nos. 140, 142.) On July 13, 2018, the Special Master heard oral argument on these issues (“Hearing”). Both parties raised many issues, and given the complexity, each will be addressed individually in detail below.

Discussion

I. Novelis’s Discovery Letter Brief

A. Deadline for Substantial Completion of Document Productions

After Novelis’s letter requesting a date for the parties' substantial completion of document productions, the parties reached an agreement that productions were to be substantially complete for the custodians identified to-date by July 31, 2018. As will be discussed below, Arconic will be conducting test searches on four additional custodians (see § I.C, infra ). For any custodians added as result of these searches, the parties agreed that Arconic would have ten additional days to complete production. (Hr'g Tr. at 103:6-9.)

B. Objective Privilege Log Lawyer List

Similarly, when Novelis submitted its letter brief, Arconic had not yet sent its list of lawyers whose presence on a communication indicates a likelihood of privilege as part of the parties' objective privilege log protocol. (Dkt. 136 at 2, Ex. A.) By the date of the Hearing, Arconic had sent the list, and Novelis stated that it is reviewing the list and will raise any issues as appropriate. (Hr'g Tr. at 112:22-113:16.)

C. Dispute Regarding Search Term Lists

At the Hearing, Novelis raised a disagreement between the parties regarding which of the parties' search term lists Arconic should run on its own documents. Novelis has agreed to run both the terms Arconic asked Novelis to search (“Arconic’s List”), as well as Novelis’s search term list for Arconic (“Novelis’s List”). Novelis asserts that Arconic should do the same—run both Novelis’s List and Arconic’s List. (Hr'g Tr. at 103:21-104:15.) Arconic disagrees, claiming that running Arconic’s List would increase the yield of documents because it was created with Novelis’s, not Arconic’s, documents in mind. (Id. at 104:18-105:24.)

The Special Master recommends that Novelis select its ten most significant terms it would like Arconic to run from Arconic’s List to assess the yield of unique documents not captured by the searches Arconic has already conducted. Arconic should review those documents, but if any terms are problematic, the parties should meet and confer to attempt to reach a solution on a term-by-term basis. This recommendation is without prejudice to a later request by Novelis to expand to the remaining search strings on Novelis’s List if the burden of the initial ten strings is modest and Novelis can demonstrate a need for the search to be done by Arconic.

D. Third Party Confidentiality Objection

Arconic objects to producing documents in response to several of Novelis’s document requests, because Arconic wishes “to protect confidential working relationships [with Ford, Chemetell and other third parties] ... to afford these entities an opportunity to exercise their right to object to the disclosure of their confidential information, as required by the appropriate contracts.” (Dkt. 142 at 2.) Novelis argues that this objection is not a valid basis for refusing to produce documents properly sought in discovery. This concern was contemplated when the Protective Order (Dkt. 79) was entered, and it will protect any sensitive information that Arconic produces that involve its business partners. (Dkt. 136 at 3-4.) The Special Master recommends that Arconic should be required to produce the documents it has been withholding on this basis, with the appropriate tier of confidentiality designation pursuant to the Protective Order.

E. Objection that Novelis Has Responsive Documents

*2 Arconic also objects to several Novelis requests on the grounds that they seek documents that it believes are already in Novelis’s possession. (Dkt. 136 at 4.) It is clear that the core of this dispute revolves around the nature of the information that was conveyed from Arconic to Novelis. The Special Master recommends that Arconic produce documents (including those it believes Novelis may already have in its possession) that reflect what information was disclosed to Novelis. Therefore, the Special Master recommends that Arconic be required to produce the documents being withheld on the basis of this objection.

F. Objection that Novelis is a “Direct Competitor”

Arconic objects to certain requests on the grounds that it is a “direct competitor” of Novelis (see Dkt. 136 at 4) but did not address this objection in its response to Novelis’s letter. This is not a valid basis to object to discovery requests under the circumstances that prevail in this case, where the top tier of confidentiality in the Protective Order has been designed to address this concern. Therefore, the Special Master recommends that Arconic be ordered to produce any documents being withheld on the basis of this objection.

G. Timeframe for Certain Requests

Although Arconic previously voiced an objection to the timeframe of certain discovery requests, the parties confirmed at the Hearing that this issue has been resolved. (See Dkt. 136 at 4; Dkt. 142 at 5; Hr'g Tr. at 117:18-20.)

H. Objection to Document Production on the Basis That They Are Not Within Arconic’s Possession, Custody or Control

Arconic objects to Novelis Request Nos. 39, 44, 46 and 47 on the ground that they seek information about Arconic’s “shareholders and investors and investment management firm [and] are not within Arconic’s custody or control.” (Dkt. 142 at 3.) These requests center around a contentious issue in this case—the claimed involvement of Elliott Management in the decision to terminate the parties' Technology Access & License Agreement (Dkt. 1-3) (“License”), and/or file this lawsuit, and other issues related to Novelis’s counterclaims.

The Special Master recommends that Arconic documents that are in possession of those persons who are on Arconic’s Board of Directors (whether or not they are affiliated with, or appointed by, Elliott Management) are documents within the “possession, custody or control” of an Arconic Board Member; they therefore can properly be requested for a subject matter at issue in the case and should be produced. With respect to documents “created in connection with the officer’s functions as a corporate employee, the corporation has a proprietary interest in them and the officer has a fiduciary duty to turn them over on demand.” Riddel Sports Inc. v. Brooks, 158 F.R.D. 555, 559 (S.D.N.Y. 1994). While a Board member is not an employee, the fiduciary relationship is comparable for those documents referring to contested issues in this case relating to Novelis, the License, termination of the License and allegations about trade secrets and/or confidential information.

As to investor or shareholder documents not in the possession, custody or control of a Board member, the Special Master recommends that such documents are not within Arconic possession, custody or control and should be subject to third party subpoena rules. If a person is an investor and shareholder, and also an Arconic Board member, his/her documents are to be produced without the necessity of a third party subpoena, if they refer or relate to Novelis.

Additionally, some of these document requests seek internal Arconic documents. For example, Request No. 46 seeks documents related to the “New Arconic Plan,” including Arconic employees' communications about the plan internally or with Elliott Management. Arconic asserts that the “ ‘Plan’ belongs to a third party investment management firm, not Arconic.” (Dkt. 142 at 3.) The Special Master recommends that such documents found in Arconic files or files of Arconic Board Members, are deemed to be within Arconic’s possession, custody or control and are properly sought in discovery.

I. Documents Related to Novelis’s Counterclaims

*3 Arconic objects to certain requests for documents propounded by Novelis that address issues related to Novelis’s counterclaims (some overlapping with the requests discussed above) on relevance grounds. Requests 39, 43, 46 and 47 are focused specifically on Novelis’s stated theory about the motives for the proxy fight, the License termination, and the decision to file this lawsuit. Because these requests are sufficiently tailored to issues raised by either the Complaint, Answer or Counterclaims in the case, the Special Master recommends that Arconic be ordered to produce the documents. Relevance addresses both parties' respective theories of the case.

However, Request Nos. 44, 48 and 50 are broader in scope and appear to seek documents that are broader than the theories Novelis is pursuing. For example, Request No. 44 broadly seeks, among other things, all communications regarding A951, and Request No. 48 seeks all documents regarding Arconic’s attempts to expand market share, and not just those that relate to its dispute with Novelis. The Special Master recommends that these document requests be denied as written, and that Novelis be ordered to narrow these requests to be more closely tailored to the issues in the case not later than one week after Court adoption of this Report & Recommendation.

Novelis Request No. 45 seeks “all documents” related to the Elliott Management proxy fight. The Special Master recommends that Novelis be ordered to resubmit this request to be more limited to seek documents related to the proxy fight that also concerned Novelis, the License, the A951 process or P552 not later than one week after Court adoption of this Report & Recommendation.

J. Additional ESI Custodians

Novelis asserts that four additional custodians should be added because they likely have documents relevant to its counterclaims. Specifically, Novelis believes that four custodians are likely to have information relevant to the Elliott Management proxy fight premised in part on Arconic’s competition with Novelis; Elliott Management’s view that the License caused Arconic to lose market share to Novelis; and Novelis’s theory regarding the motives to file this lawsuit and terminate the License. (Dkt. 136 at 10-11.) Arconic counters that such a search is not warranted because it has, through counsel, represented to Novelis that it is “unaware of any communications of meetings between Plaintiff and Elliott Management Corporation concerning the NDA, License, A951 process, P552 program, or the '030 patent.” (Dkt. 142 at 6.) At the Hearing, Arconic explained that it formed this understanding by relying on Arconic’s in-house counsel, who made inquiries internally. (Hr'g Tr. at 123:2-23.)

In order to allow Novelis to test its theory, but without prematurely adding the burden of adding custodians without a basis, the Special Master recommends that Arconic be ordered to run hit reports using the Novelis search term list (plus Novelis’s additional ten search terms from Arconic’s List, discussed Section I.C, supra ) on these additional four custodians, to determine if collection and review of each of these potential custodians is warranted. If these custodians do not have potentially responsive documents, the hit report should reflect few hits, and the burden would be low; conversely, if certain search terms yield an unmanageable number of hits, the parties can meet and confer to determine an appropriate solution on a term-by-term basis.

K. Privilege/Work Product Objection

Arconic objects to certain Novelis requests on the grounds of privilege and work product. Arconic’s objection appears to be that these requests call for some privileged documents, and thus the entire category of documents sought is objectionable. (Dkt. 142 at 4.) Arconic argues that certain requests seeking communications with “any third party” “contain no limitations whatsoever and, therefore, necessarily encompass documents and communications between Arconic, outside law firms, and potential experts.” (Id.)

*4 Arconic is entitled to object to requests to the extent they call for privileged information, but this is not a basis to object to producing responsive, non-privileged documents. (Generally, the phrase “any third party” does not mean one’s outside counsel or expert; because communications with a third party is precisely what makes a communication not privileged.) In this case, the parties have agreed to a sophisticated privilege protocol to streamline the process of determining what documents should be withheld from production on the grounds of privilege. Accordingly, the Special Master recommends that Arconic be ordered to produce non-privileged, documents that are responsive to the Novelis document requests to which Arconic objected on this basis, and to log any responsive, privileged documents.

Additionally, all counsel for both parties are required to ensure that the individuals conducting the privilege review and preparing privilege logs are deeply knowledgeable about the law of privilege; understand that documents between attorney and client that are sent to third parties are no longer within the scope of the privilege; that merely cc'ing a lawyer does not make a document privileged; that a privileged document contained within a family of documents does not protect the non-privileged portion of that family from production; etc. The Special Master has had too many cases that reveal excessive logging by young or per diem attorneys who withhold documents that are not privileged because they do not truly know the law of privilege. Thus, it is the duty of lead counsel on both sides to personally ensure that privilege instructions are in writing and clearly understood by the attorneys reviewing documents for privilege and preparing the privilege logs.

L. Overbreadth Objection to Requests Relating to A951 Process

Novelis seeks several broad categories of material relating to the A951 process, such as “[a]ll documents concerning any plans to change, modify, or alter A951,” and “[a]ll documents showing the design, schematics, operations, and production output of Your Davenport Line.” (Novelis Request Nos. 26, 31; see also Dkt. 136 at 5 (seeking Arconic’s compliance with Novelis Document Requests Nos. 23-24, 26 and 28-31).) Though Novelis argues that such documents would “show how Arconic’s process did not include” Novelis’s improvements, among other things, Novelis does not need—and is not entitled to—every single document ever written within Arconic about this process. The Special Master recommends that Novelis be ordered to narrow these requests to be more tailored to the issues in the case not later than one week of court adoption of this Report & Recommendation.

M. Objection to Requests Regarding Allegations in Complaint

Arconic objects to Novelis Document Request Nos. 69 and 73, which seek documents related to certain allegations made in the Complaint. (Dkt. 136 at 6.) Arconic argues that the allegations were merely background on the aluminum industry and that it “is not required to search for publicly available information.” (Dkt. 142 at 4.) Arconic elected to include such allegations in its Complaint and thus should be ordered to produce any responsive documents that are in its possession and collected pursuant to the agreed-to custodian and search term parameters that pertain to these allegations. Arconic does not need to perform a search of public records responsive to these requests, but it is properly requested to produce its own documents that relate to these allegations.

N. Novelis Document Requests Related to Damages

Arconic objects, on grounds of relevance and overbreadth, to certain requests that Novelis claims are relevant to the damages calculation in this case. Novelis Document Request Nos. 18, 40 and 53-60 are broad requests, seeking all documents “articulat[ing] the benefits for entering into the License,” and “[a]ll non-public documents ... concerning the inventions set forth in any patent or patent application relating to A951.” (Novelis Document Request Nos. 18, 53.)

*5 At the Hearing, the Special Master discussed with the parties the need to disclose theories on how damages in this case should be calculated before issuing broad document requests related to damages. (Hr'g Tr. at 162-69.) The Special Master recommends that such broad requests that potentially, but not specifically, could support or refute damages are not warranted at this time, when there are presently no parameters for proving damages. Novelis may promulgate more tailored requests to gather preliminary information to form a damages theory.

At the Hearing, the parties agreed to a mutual exchange of preliminary damages theories on August 15. Thus, the scope of the document requests relating to damages calculations, including Request Nos. 18 and 40, should be deferred until the parties have exchanged preliminary damages theories, and then revise their document requests to those that are reasonably tailored to those theories.

As to Request Nos. 53-60, which seek broad categories of information pertaining to various Arconic patents, the Special Master recommends that Novelis is entitled to discover information related to which of Arconic’s purported trade secrets may already have been in the public domain (either through an Arconic patent application, or otherwise) before Novelis filed its patent application. Such information is central to the trade secret claim.

O. Novelis Document Request No. 20

At the Hearing, Novelis raised an additional issue regarding the need for the information requested in Document Request No. 20, which seeks “[a]ll documents concerning any communications with Ford regarding Arconic’s proposal to use A951.” Novelis argues that this relates to a theory in its counterclaims regarding Arconic’s alleged interference with Novelis’s contract with Ford. (Hrg. Tr. at 155:16-23, 156:7-13.) The Special Master recommends that Novelis be required to substantially narrow the document request to a connection with Novelis, and not simply any communications between Arconic and Ford. Novelis may also pursue its theory during deposition questioning.

P. Novelis Document Request No. 63

Novelis’s Document Request No. 63 relates to Novelis Interrogatory No. 6, which asked Arconic to identify “each person who was involved in developing or discovering” each claimed trade secret. (Dkt. 142-3.) Arconic responded with eleven names (id.), and Request No. 63, at issue here, asked Arconic to produce all documents “by or concerning” each individual “concerning their work on the Trade Secrets and/or Confidential Information.” (Dkt. 136-4 at 30.) Arconic objects on relevance and overbreadth grounds, arguing, among other things, that the request, pertains to Arconic’s patents, not its trade secrets, and therefore seeks irrelevant information. (Dkt. 142 at 5.)

The Special Master recommends that Arconic should be ordered to produce responsive, non-privileged documents in response to Request No. 63 because the request explicitly seeks documents “concerning [the individuals' responsible for developing Arconic’s claimed trade secrets] work on the Trade Secrets and/or Confidential Information,” and relies on information provided by Arconic identifying those individuals. (Dkt. 136-4 at 30.) The request appears reasonably focused on issues central to the claims and defenses in the case.[1]

Q. Novelis Interrogatory No. 20

Interrogatory No. 20 seeks information pertaining to Arconic’s document preservation and collection efforts. Arconic suggests that the request is tantamount to an assertion of spoliation and that it has participated in discovery in good faith, such that probing the details of its process is not warranted. (Dkt. 142 at 5-6.)

*6 There are no spoliation charges now pending by either party against the other. Nonetheless, the Special Master recommends that both parties provide basic information regarding preservation efforts. This is intended to be a bilateral obligation on both sides of this dispute and is not intended to single out counsel on either side with any implication of spoliation.

Specifically, both parties should be ordered to provide: (i) the names of every recipient of a litigation hold in connection with this case and the Derivation Proceeding; (ii) the date each such person received the hold; (iii) certify that each recipient has been interviewed to determine where relevant documents are stored; (iv) certify that for each recipient, all repositories of relevant information have been subject to preservation (e.g., that automatic email purges have been suspended, that a laptop has been imaged, etc.); and (v) identify any repositories or relevant documents the party knows has been destroyed, discarded, modified or not under preservation measures after the litigation hold was sent (e.g., that a laptop or thumb drive likely to contain relevant information has not been imaged or collected). If any questioning during depositions reveals what either party believes may constitute insufficient preservation, insufficient identification of repositories, or insufficient interviews regarding sources of potentially relevant documents, further specifics of a party’s document preservation and identification efforts may be appropriate, and all counsel are thus on notice of the potential that questions pertaining to what specific repositories of documents each custodian has may be asked.

II. Arconic’s Discovery Letter Brief

A. Arconic Interrogatory Nos. 1, 5 and 7

Arconic asserts that Novelis’s response to certain interrogatories is deficient in providing Arconic information it needs to gather information pertaining to the '440 patent application. (Dkt. 135 at 1-2.)

Interrogatory 1 asks Novelis to “[i]dentify and state the basis” for Novelis’s claimed improvements to the A951 process. Novelis responds to Arconic’s complaints about Novelis’s response to this interrogatory by arguing that it responded to what the interrogatory sought, and that Arconic’s request for the history of inventorship of each of the improvements goes beyond the interrogatory as written. (Dkt. 140 at 1-2.) Novelis further asserts that other interrogatories and document requests will capture information relevant to these issues. (Id. at 2.) During the Hearing, Novelis agreed to produce documents reflecting “the basis for the claim that things in the patents were as a result of Novelis' improvements or other independent inventions” by July 31, 2018 and noted that Interrogatory No. 11 asked for information that would provide the information Arconic says it needs. (Hr'g Tr. at 235:22-138:5-18.) Arconic agreed that if it did not receive what it needed, it would raise the issue again. (Id. at 138:19-23.) The Special Master also notes that this information should be sought in an efficient manner, whether that be by interrogatory, document discovery and/or depositions. No order is recommended unless and until this issue is raised again by Arconic, after it receives such further information from Novelis.

Interrogatories 5 and 7 seek information relating to patent issues, such as the specific date when Novelis learned of any prior art and commercialization of the claims prior to the filing date. The Special Master recommends that such discovery is more germane in patent litigation and that it has not been shown to be relevant to the trade secrets disclosure and contract breach allegations in this case, and thus is beyond the reasonable scope of discovery at this time.

B. Interrogatory No. 14

*7 Arconic’s Interrogatory seeks information pertaining to any effort by Novelis to “ ‘demonstrate[ ], by affidavit’ that certain ‘elements of the methods, procedures, processes, or compositions that may be included in the Alcoa 951 Pretreatment Process' were ‘in Novelis’ possession prior to its receipt from [Arconic]’ or ‘available to the public without breach of the obligations' under the License, as required by Section 2.2.1 of the License.’ ” (Dkt. 135-1 at 13.) This interrogatory relates to Arconic’s new allegations in the proposed amended complaint regarding Section 2.2.1 of the License. (See Dkt. 115-1 at ¶ 43) (“[B]efore disclosing any purportedly public aspects of the A951 process, Novelis is required to obtain approval from Arconic and, if needed, submit an affidavit.” (Citing License § 2.2.1).) The recommended ruling on this interrogatory will be deferred until the Special Master issues its Report & Recommendation on the scope of the proposed Amended Complaint.

C. Corporate Information Regarding Novelis Corp. and Novelis Inc.

Arconic argues that Novelis “has not provided any information on the corporate relationship and structure of Novelis Inc. and Novelis Corp.” contrary to Report and Recommendation No. 5, which permitted discovery “to ascertain which individuals at which entity took the actions on which the Complaint is premised.” (Dkt. 135 at 3; R&R #5 at 16.) Novelis represented at the Hearing that subsequent discovery will provide the information that Arconic seeks. (Hr'g Tr. at 136:14-18.) The Special Master reserves judgment on this issue and will hear further argument should Arconic feel that Novelis did not provide a sufficiently prepared witness.

Conclusion

For the foregoing reasons, the Special Master recommends that the Court order that:

A proposed Form of Order will be filed by the Special Master as Report & Recommendation #17.

Faith S. Hochberg, U.S.D.J. (Ret.) Special Master

At the Hearing, counsel for Arconic indicated that it had withdrawn its objections to Novelis Document Request Nos. 105, 106, 111 and 112.