Pursuant to the Court's September 23, 2022 Order Appointing Philip Favro As Special Master (“Special Master Appointment Order”),[1] the Special Master hereby provides the following REPORT regarding the status of the discovery disputes between Plaintiff and Counterclaim-Defendant Deal Genius, LLC (“Deal Genius”) and Defendant and Counterclaimant O2COOL, LLC (“O2COOL”).

1. This Report provides an update on the outstanding discovery disputes between the Parties. There are presently three disputes between the Parties. The first of those disputes involves Deal Genius's production of certain emails. The second dispute concerns Deal Genius's failure to preserve certain emails and other ESI from one of its former employees, Emily Greenfield. The third dispute centers around O2COOL's intention to seek sanctions against Deal Genius regarding its discovery conduct in connection with negotiating search query hit counts with O2COOL. A summary of the first two disputes is memorialized for the Court's reference in Special Master Report No. 6.[2] Details regarding the third dispute are reflected in Special Master Report No. 9.[3]

2. At the Special Master's request, the Parties met with the Special Master in a video conference on May 2, 2023 (“5/2/23 Conference”). The purpose of 5/2/23 Conference—which was transcribed by a court reporter—was to provide the Parties with an opportunity to informally resolve their remaining discovery disputes in advance of the next scheduled status conference hearing before the Court on May 10, 2023. In advance of the 5/2/23 Conference, the Parties exchanged meet and confer correspondence on the open discovery issues memorialized in Special Master Report No. 9 and submitted their positions to the Special Master for his review. After reviewing the Parties’ submission and conferring with them on the record at the 5/2/23 Conference, the Special Master now reports as follows on the status of the Parties’ disputes.

3. O2COOL and Deal Genius have been working to resolve two remaining concerns O2COOL raised regarding Deal Genius's production in response to the January 30, 2023 Stipulation and Order (“1/30/23 Order”). The first of O2COOL's concerns focuses on the requirement under the 1/30/23 Order that Deal Genius “provide O2COOL with a list of all duplicate emails or documents identified by Bates number that are hits on [Search Queries] 2-5 and which Deal Genius previously produced to O2COOL in this litigation.”[4] The second concern arises from the requirement under the 1/30/23 Order that Deal Genius conduct elusion testing on the documents that did not hit on Search Queries 2-5 to ensure that relevant documents were not left undisclosed and thus unproduced to O2COOL.[5] Details regarding the Parties’ respective positions on these issues are memorialized in Special Master Report No. 9.[6]

A. The Duplicate Documents Issue

4. After the Parties’ discovery conference with the Special Master on April 11, 2023 (“4/11/23 Conference”), Deal Genius agreed to analyze its productions to address the discrepancy between its initial production figure (1,966 documents) in response to Search Queries 2-5 in 2022 and the duplicate documents list (449 documents) that it initially provided to O2COOL on March 2, 2023.

5. On April 28, 2023, Deal Genius provided O2COOL with a list of 1,904 (though not 1,966) Bates numbered documents. In its submission to the Special Master, Deal Genius asserted that the 1,904 documents it had now identified represented nearly all of the documents it previously produced to O2COOL. Deal Genius explained that it had difficulty identifying duplicates from its prior production in 2022 given the different electronic discovery search processes it had used to handle its productions in the litigation. Deal Genius maintains that it was able to address these by determining whether the 1,904 documents were derived from Emily Greenfield's emails or otherwise associated or identified with a family member that Deal Genius previously produced to O2COOL. Deal Genius did not identify the remaining 58 documents (which, combined with the 1,904 documents, would equal 1,966) for O2COOL, arguing those documents were “generally generic solicitation emails from vendors, and are not relevant to this suit.”[7]

6. In response, O2COOL requested that Deal Genius clarify which criteria the duplicates satisfied, i.e., whether the 1,966 documents were from Ms. Greenfield's emails or otherwise associated or identified with a family member that Deal Genius previously produced to O2COOL.

7. At the 5/2/23 Conference, the Special Master indicated that the best way to resolve the impasse over this issue at this point would be for Deal Genius to identify the remaining 58 duplicate documents for O2COOL and thereby account for the 1,966 documents previously produced to O2COOL. The Special Master emphasized that the 1/30/23 Order required Deal Genius to identify the documents at issue and did not require Deal Genius to categorize the nature of every duplicate document.[8] In response, Deal Genius agreed to produce a final list of duplicates to O2COOL identifying the remaining 58 documents by May 3, 2023 and thus bring itself into compliance with the 1/30/23 Order.

8. Despite Deal Genius's agreement to identify the remaining 58 documents, O2COOL remains unsatisfied with Deal Genius's representations regarding the list of duplicate documents Deal Genius identified. O2COOL is concerned with Deal Genius's efforts toward compliance with the 1/30/23 Order and whether the documents Deal Genius identified are actual duplicates. The Special Master informed O2COOL that it may raise its concerns with the Court at its next status conference hearing and also reference them in connection with the sanctions motion it is presently considering against Deal Genius for alleged discovery abuses.

9. While considering this dispute to be “resolved” now since Deal Genius has met the express terms of the 1/30/23 Order,[9] the Special Master is surprised by Deal Genius's tardy compliance on this item. Deal Genius could have produced the list of duplicate documents—the 1/30/23 Order required that Deal Genius do so—by the March 2, 2023 deadline. Had Deal Genius done so, it could have obviated two months of additional wrangling with O2COOL over this issue. During that time, the Parties and the Special Master have spent many hours and incurred substantial costs. While the exercise of identifying duplicate documents involves some burden, doing so for a total of 1,966 documents is certainly not unduly burdensome.[10] In any event, Deal Genius alone is responsible for managing its production efforts and must bear the reasonable burdens associated with those efforts.[11] If Deal Genius had needed additional time to handle this process, it could have sought a reasonable extension of the March 2, 2023 deadline pursuant to the 1/30/23 Order.[12] From the Special Master's perspective, Deal Genius bears responsibility for this dispute since it appears that it did not undertake a thorough inquiry into the issue of duplicate documents until being prompted to do so by O2COOL's meet and confer efforts.[13] Even then, it took repeated prompting by O2COOL and multiple conferences with the Special Master before Deal Genius fully complied with the 1/30/23 Order.

B. Elusion Testing

10. Regarding the issue of elusion testing and in connection with the Parties’ meet and confer efforts,[14] Deal Genius indicated in its submission to the Special Master that it had agreed to run the additional search query that O2COOL proposed—“neck! & fan & (karnani OR nagrani)”—against the null set of documents. At the 5/2/2023 Conference, Deal Genius represented that it had already run the search query and believed there were fewer than 100 documents that hit on the query. Deal Genius agreed to provide O2COOL with a hit report on or before May 5, 2023 and to produce any relevant, responsive documents by May 12, 2023. Regarding the document production, the Parties agreed that Deal Genius would make its production in PDF and ensure that produced emails would include appropriate email header information, i.e., the sender, recipient, date, and subject line details.

11. After the conclusion of Emily Greenfield's deposition on April 17, 2023, O2COOL raised an issue with Deal Genius regarding the production of certain messages from Deal Genius's Microsoft Teams messaging platform (“Teams”). In its meet and confer correspondence, O2COOL represented that Ms. Greenfield testified that Deal Genius established a “Simply Genius Necklace Fan” Teams messaging “channel” for its employees to communicate regarding the allegedly infringing product.[15] Those employees apparently included (among others) two of Deal Genius's email custodians, Chris Matsakis and Monica Matsakis. O2COOL requested that Deal Genius produce relevant messages from the “Simply Genius Necklace Fan” Teams messaging channel.

12. In its submission to the Special Master, Deal Genius represented that it had already produced relevant documents from its “Simply Genius Necklace Fan” Teams messaging channel that had hit on Deal Genius's search queries. While disputing the merits of O2COOL's request, Deal Genius nevertheless agreed to produce any other additional relevant documents from its “Simply Genius Necklace Fan” Teams messaging channel. Deal Genius agreed to produce those relevant documents by May 12, 2023. Regarding the document production, the Parties agreed that Deal Genius's production would include appropriate Teams message header information.

13. Based on discussions with the Parties during the 5/2/23 Conference, the Special Master understands that O2COOL still anticipates bringing a motion for sanctions against Deal Genius for the reasons memorialized in Special Master Report No. 9. The Parties’ positions regarding the merits of such a motion, previously summarized in Special Master Report No. 9, remain unchanged.[16]

14. In response to questioning from the Special Master, O2COOL clarified that its prospective motion for sanctions would likely include a request for relief under Federal Rule of Civil Procedure 37(e) resulting from the alleged spoliation of Ms. Greenfield's emails and relevant information from Ms. Greenfield's laptop computer. The Parties shared their respective positions regarding this aspect of O2COOL's forthcoming sanctions motion. O2COOL anticipates asserting that Deal Genius lost relevant information after it removed Ms. Greenfield's email account from its Microsoft 365 platform and wiped her laptop computer, that the lost information cannot be replaced by additional discovery as demonstrated by Ms. Greenfield's deposition testimony, and that Deal Genius eliminated this information with the requisite “intent to deprive” under Rule 37(e)(2). In response, Deal Genius maintains that neither relevant emails nor other relevant information were lost and that, in any event, Deal Genius did not intend to deprive (much less actually deprive) O2COOL of any relevant information in the litigation.

15. Finally, O2COOL represented that it is targeting the end of May 2023 as the timeframe for filing its motion for sanctions.

SIGNED this 5th day of May, 2023.

Docket No. 75, filed September 23, 2022.

Docket No. 112, ¶¶2-5, 21, 30, filed February 17, 2023.

Docket No. 126, ¶¶17-20, filed April 28, 2023.

Docket No. 109, at ¶¶3, 6(a), filed January 30, 2023.

Id. at ¶7.

Docket No. 126, ¶¶6-14, filed April 28, 2023.

Correspondence from Deal Genius's counsel, Ron Sklar, to the Special Master, dated May 1, 2023.

Docket No. 109, at ¶¶3, 6(a), filed January 30, 2023.

On May 4, 2023, Deal Genius represented to the Special Master that it had provided O2COOL with an updated duplicate list reflecting the previously unidentified 58 duplicate documents.

Philip Favro, Proportionality Weaponized: How It Happens And What Can Parties And Courts Do About It, The Circuit Rider: The Journal of the Seventh Circuit Bar Association, at 14-15 (Sept. 24, 2021).

See The Sedona Principles, Third Edition: Best Practices, Recommendations & Principles for Addressing Electronic Document Production, 19 Sedona Conf. J. 1, 118 (2018) (“Principle 6 recognizes that a responding party is best situated to preserve, search, and produce its own ESI. Principle 6 is grounded in reason, common sense, procedural rules, and common law, and is premised on each party fulfilling its discovery obligations without direction from the court or opposing counsel, and eschewing ‘discovery on discovery,’ unless a specific deficiency is shown in a party's production.”); Marin v. Apple-Metro, Inc., No. 12CV5274ENVCLP, 2023 WL 2060133, at *8, n.20 (E.D.N.Y. Feb. 8, 2023) (determining that defendant had an obligation under Sedona Principle 6 to evaluate the methods and procedures under which it would produce relevant ESI).

Docket No. 109, at ¶8(a), filed January 30, 2023.

See Fed. R. Civ. P. 26(g)(1) (providing that parties must undertake a “reasonable inquiry” in connection with their discovery efforts); DR Distributors, LLC v. 21 Century Smoking, Inc., 513 F. Supp. 3d 839, 952-54 (N.D. Ill. 2021).

Docket No. 126, ¶¶10-14, filed April 28, 2023.

Overview of teams and channels in Microsoft Teams, Microsoft, available at https://learn.microsoft.com/en-us/microsoftteams/teams-channels-overview (“Channels are dedicated sections within a team to keep conversations organized by specific topics, projects, disciplines—-whatever works for your team.”). See also Red Wolf Energy Trading, LLC v. Bia Cap. Mgmt., LLC, No. CV 19-10119-MLW, 2022 WL 4112081, at *7, n.3 (D. Mass. Sept. 8, 2022) (describing a “channel” in Slack, a comparable messaging platform to Teams, as being “a discussion thread, usually involving specific topics or groups.”).

Docket No. 126, ¶¶17-20, filed April 28, 2023.