DEAL GENIUS, LLC, a Delaware Limited Liability Company, Plaintiff, v. O2COOL, LLC, a Delaware Limited Liability Company, Defendant No. 21 C 2046 United States District Court, N.D. Illinois, Eastern Division Filed: April 28, 2023 Counsel David J. Thomas, Pro Hac Vice, Honigman LLP, Bloomfield Hills, MI, William Butler Berndt, Ron N. Sklar, Honigman LLP, Chicago, IL, for Plaintiff. Michael Anthony Parks, Sartouk H. Moussavi, Thompson Coburn LLP, Chicago, IL, for Defendant. Favro, Philip J., Special Master SPECIAL MASTER REPORT NO. 9 REPORT RE STATUS OF DISPUTES OVER THE PRODUCTION OF EMAILS AND THE FAILURE TO PRESERVE EMAILS 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. A summary of each of these disputes is memorialized for the Court's reference in Special Master Report No. 6.[2] 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. I. DISPUTES RE DEAL GENIUS'S DOCUMENT PRODUCTION IN RESPONSE TO SEARCH QUERIES ONE THROUGH FIVE 2. In this patent litigation involving claims and counterclaims for invalidity and infringement, the Parties have been “bitterly divided” for some time now over issues relating to the production of relevant emails.[3] Those disputes involve, among other things, concerns from O2COOL that Deal Genius has not made fulsome email productions from its five designated email custodians in response to O2COOL's five email search queries. The five Deal Genius email custodians are Chris Matsakis, Monica Matsakis, Emily Greenfield, Dave Sienna, and Ram Subrahmanya. Those disputes eventually culminated in the appointment of the Special Master.[4] 3. As the Court is aware, the Special Master worked with the Parties to execute a stipulation and order (“11/7/22 Order”) that would require Deal Genius to redo its production of documents in response to O2COOL's first search query (“Search Query One”).[5] Deal Genius made its corresponding production of documents and the Parties have been working through various concerns that O2COOL raised regarding aspects of that production.[6] As the Special Master understands it, with the resolution this month of the Parties’ respective disputes over their respective productions of relevant Microsoft Teams messages, Deal Genius has addressed O2COOL's remaining concerns with Search Query One. 4. Regarding O2COOL's remaining search queries (“Search Queries 2-5”), the Special Master worked with the Parties to execute a stipulation and order (“1/30/23 Order”) that required Deal Genius to redo its production of documents in response to Search Queries 2-5.[7] Deal Genius thereafter produced the responsive documents called for by the 1/30/23 Order to O2COOL. The Parties jointly represented during a conference with the Special Master on April 11, 2023 (“4/11/23 Conference”) that Deal Genius produced a grand total of 54 documents to O2COOL. 5. O2COOL subsequently raised multiple issues with Deal Genius's production in response to the 1/30/23 Order. Those issues are the subject of meet and confer efforts between the Parties. The first issue concerns 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.”[8] The second issue 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.[9] A. O2COOL's Concerns regarding Deal Genius's List of Duplicate Documents 6. Regarding the first issue, the Special Master has explained that the requirement that Deal Genius give O2COOL a list of duplicate documents was designed to offer “O2COOL visibility on duplicate hits under Search Queries 2—5 that have already been produced in this litigation ... [and] afford Deal Genius a quick and easy method to identify previously produced duplicates without having to reproduce them to O2COOL.”[10] In its effort to comply with this provision, Deal Genius provided O2COOL with a list of 449 documents identified by Bates number that Deal Genius represented it previously produced in discovery to O2COOL.[11] 7. O2COOL raised concerns regarding this list of duplicates, asserting that it was incomplete. O2COOL has argued that Deal Genius's list of duplicate documents should be reasonably equivalent to the number of documents that Deal Genius previously produced in response to Search Queries 2-5 in the summer of 2022, i.e., 1,966 documents. In response, Deal Genius maintains that the number of duplicate documents will not be identical to 1,966 for multiple reasons. For example, Deal Genius represents that it used different electronic discovery search processes to produce responsive documents. In addition, Deal Genius asserts that the 1,966 number won't include the lost Emily Greenfield emails. Finally, Deal Genius indicated that inconsistent document coding decisions could be responsible for the lower figure. The Parties generally discussed their positions on this issue during the March 15, 2023 status conference hearing before the Court and again, in greater detail, with the Special Master during the 4/11/23 Conference. 8. The Special Master has taken the position that Deal Genius must be able to substantiate its discovery positions including the defensibility of its document productions. In particular, the Special Master maintains that Deal Genius should be able to reasonably account for the difference between the 1,966 documents it previously produced to O2COOL and the 449 duplicate documents it identified for O2COOL on March 2, 2023. 9. At the 4/11/23 Conference, the Special Master recommended that Deal Genius voluntarily undertake an analysis of its productions to address the discrepancy between its initial production figure (1,966 documents) and the duplicate documents list (449 documents). In response, Deal Genius agreed to make such an effort and is presently working to provide O2COOL with an explanation on the duplicate document discrepancy issue on or before April 28, 2023. B. O2COOL's Request that Deal Genius Conduct Further Searches after its Null Set Review 10. Regarding the second issue, the 1/30/23 Order requires that Deal Genius conduct elusion testing on the documents that did not hit on Search Queries 2-5 by reviewing a sample of documents from the null set, i.e., the subset of documents against which Deal Genius ran Search Queries 2-5 and that did not hit on any of those queries.[12] The purpose for reviewing a sample from the null set is so that Deal Genius, as the responding party, can reasonably ensure it has not overlooked relevant, responsive documents that should have been produced in discovery.[13] Referred to as elusion testing, this type of validation measure is a standard quality assurance practice in electronic discovery and essential for providing transparency on whether material documents have eluded the search terms.[14] If Deal Genius did identify relevant documents among the null set sample, the 1/30/23 Order required the Parties to meet and confer in order to determine whether Deal Genius should run additional search queries to identify other relevant documents.[15] 11. Consistent with the 1/30/23 Order, Deal Genius reviewed a sample of documents from the null set, identified two relevant documents that did not hit on Search Queries 2-5, and subsequently produced those documents to O2COOL. 12. Since the 4/13/23 Conference, the Parties have exchanged meet and confer correspondence over the use of additional search terms to isolate other relevant documents that Search Queries 2-5 did not identify. In its initial correspondence on this issue, O2COOL proposed having Deal Genius run the term “neck! & fan & (karnani OR nagrani)” against the null set. In response, Deal Genius (among other things) asserted that such a term was overly broad for purposes of discovery at this time, violated the local patent rules regarding the discovery of ESI, and exceeded the Court's most recent directive to bring discovery to a speedy conclusion. 13. After receiving the Parties’ respective correspondence, the Special Master directed the Parties to hold an appropriate meet and confer pursuant to the 1/30/23 Order and adopt positions that could result in an informal resolution to this issue. 14. To assist the Parties with their meet and confer efforts on this issue, the Special Master will schedule a conference with the Parties for the week of May 1, 2023 and request concise letter brief submissions in advance regarding the Parties’ positions on the issues. II. ISSUES ARISING FROM THE DEPOSITION OF EMILY GREENFIELD 15. Consistent with the Parties’ representations to the Court and the Special Master, the deposition of Emily Greenfield took place on April 17, 2023. In response to a request from the Special Master, the Parties summarized and exchanged their respective views regarding Ms. Greenfield's testimony. After reading the summaries, the Special Master understands that O2COOL, on the one hand, believes Ms. Greenfield is a key witness whose testimony and documentary evidence are essential to its claims while Deal Genius, on the other hand, believes Ms. Greenfield is at best a marginal witness with little if any information to share pertinent to the litigation. The Parties likewise have adopted different positions regarding whether Deal Genius directed Ms. Greenfield to preserve relevant information after the duty to preserve triggered. O2COOL asserts that Deal Genius did not provide Ms. Greenfield with written preservation instructions while Deal Genius maintains that Ms. Greenfield knew she had a duty to preserve relevant information. 16. While the Parties have not exchanged meet and confer correspondence regarding any issue arising from Ms. Greenfield's deposition, the Special Master anticipates that O2COOL may do so in advance of the Court's upcoming status conference hearing scheduled for May 9, 2023. The Special Master will work with the Parties’ at the upcoming discovery conference in an effort to understand and help expedite the resolution of any potential issues arising from Ms. Greenfield's deposition. III. O2COOL'S SANCTIONS MOTION AGAINST DEAL GENIUS 17. Based on discussions with the Parties during the 4/13/23 Conference, the Special Master understands that O2COOL intends to bring a motion for sanctions against Deal Genius. 18. As the Special Master understands it, O2COOL believes Deal Genius engaged in discovery misconduct throughout the Parties’ negotiations during 2021 and 2022. In particular, O2COOL asserts that Deal Genius misrepresented search query hit count figures and unreasonably multiplied the litigation proceedings in this matter. O2COOL has indicated that it would seek both monetary and nonmonetary relief under Rules 26 and 37, along with 28 U.S.C. § 1927 and the Court's inherent authority. 19. For its part, Deal Genius maintains there is no merit to O2COOL's assertions. As the Special Master understands it, Deal Genius argues that it provided accurate information regarding its search query hit counts, negotiated with O2COOL in good faith throughout the discovery process, and that any motion for sanctions will only further delay a trial on the merits. 20. The Special Master has worked with the Parties to explore an informal resolution to this issue. However, the Parties at this point have adopted diametrically opposed positions on this issue that, as the Special Master understands it, can only be resolved through formal motion practice. SIGNED this 26th day of April, 2023. Footnotes [1] Docket No. 75, filed September 23, 2022. [2] Docket No. 112, filed February 17, 2023. [3] Docket No. 71, filed September 21, 2022. [4] Id. [5] Docket No. 91, filed November 7, 2022. [6] See Docket No. 112, at ¶¶6-20, filed February 17, 2023. [7] Docket No. 109, filed January 30, 2023. [8] Docket No. 109, at ¶¶3, 6(a), filed January 30, 2023. [9] Id. at ¶7. [10] Email from the Special Master to Counsel for the Parties, dated January 25, 2023. [11] The Parties disagree whether the total number of duplicate documents is 449 (the number Deal Genius supplied) or 413 (the number O2COOL provided). During the 4/11/23 Conference, Deal Genius and O2COOL represented that the 449 number included 25 documents that Deal Genius claimed as privileged and previously withheld from discovery. O2COOL further represented that an additional 11 documents that Deal Genius identified were listed multiple times on Deal Genius's duplicate document list. In response, Deal Genius indicated that it appeared some of the documents it identified on the list were in fact listed more than once. Accordingly, the number of duplicates could in fact be 413 documents. [12] Docket No. 109, at ¶7, filed January 30, 2023. [13] See City of Rockford v. Mallinckrodt ARD Inc., 326 F.R.D. 489, 491-92, 495 (N.D. Ill. 2018) (discussing the purpose of elusion testing and the need for reviewing the null set sample to ensure a production is proportional); see also Shumway v. Wright, No. 4:19-cv-00058, 2019 WL 8135308 (D. Utah Nov. 22, 2019), report and recommendation adopted, 2019 WL 8137130 (D. Utah Dec. 16, 2019) (detailing the nature and significance of the null set). [14] Id. [15] Docket No. 109, at ¶7(c)-(d), filed January 30, 2023.