Fishing For ESI

Orrick - Trade Secrets Group

When National Fish and Seafood’s (NFS) head of research left for a new opportunity at Tampa Bay Fisheries, she may not have taken just her talents to the competition.  According to NFS’ lawsuit, the former employee transferred thousands of files containing confidential and proprietary information prior to her departure from the company.  NFS also alleges that the CEO of Tampa Bay Fisheries conspired with NFS’s former employee to steal trade secrets involving its proprietary clam production process.

Massachusetts federal Judge Leo Sorokin will oversee the trial, which is set to begin on November 26, 2018.  Meanwhile, the parties are embroiled in what is fast-becoming an all too common discovery dispute: who should collect electronically stored information (ESI) and how.  While the parties agreed to allow an independent third-party to conduct the forensic examination of the electronic devices allegedly used in the theft of trade secrets, the how is mired in controversy.

While NFS requested that the forensic examiner use broad search terms, Tampa Bay wanted a limited forensic exam that would include only the names of the allegedly stolen files.  In trade secrets litigation, the alleged trade secrets are often transmitted via ESI, requiring the parties to meet and confer to determine the best way to search and review those files.  When the parties cannot agree, the claimants normally file a motion to compel, making the court the ultimate decision-maker.  In this case, however, Judge Sorokin rejected NFS’s request to use search terms entirely.  Judge Sorokin’s ruling is in line with courts’ general approach in the context of ESI, where judges are often inclined to favor efficiency over perfection.

This discovery dispute brings to light an important lesson for trade secret litigants: ultimately, it is in the parties’ best interest to seek reasonable compromise without requiring court intervention.  For a plaintiff, this means considering the probative value of proposed search terms.  If proposed search terms are overly broad and clearly designed only to harass, plaintiffs risk losing credibility with a judge who could ultimately decide, as Judge Sorokin did here, to disallow the use of search terms entirely.  For a defendant, the flipside of that approach applies.  If proposed search terms are too narrow, a court could ultimately force a defendant to review all documents—not just those hitting on agreed-upon search terms.  Therefore, no matter what side of the “v” you are on, in the context of ESI disputes, it may be in your best interest to adopt a reasonable position.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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