When Supreme Court Justice Antonin Scalia went on a publicity tour for his book on legal writing earlier this year, it was considered a rare peek into the mind of an influential jurist. Here was a Supreme Court justice telling lawyers how to persuade judges. But the fact is, while judges are often a circumspect and guarded lot, there are few topics they enjoy talking about more than the art of litigation. And few litigation topics have gotten the judiciary talking as much as e-discovery.

E-discovery is a thorny issue because the volume and complexity of electronic records is many times greater than that of paper records. Judges say that succeeding at e-discovery starts before litigation even rears its head. Cathy Ann Bencivengo, magistrate judge with the U.S. District Court for the Southern District of California, practiced 17 years in patent litigation before joining the bench. “If you have clients you represent on a regular basis, know how their IT works,” she says. “If you can’t know the details, at least know what you’re talking about before you talk to the judge.”

Judges say that if lawyers have business clients they expect to represent in court, it is important to understand the file formats clients use, the metadata, or hidden information in those files, how many PDAs, laptops and servers they own, and who is in charge of them. They should also know whom to contact to preserve digital records without interrupting business. Most importantly, judges say to make sure that clients have a policy regulating how digital records are kept and destroyed and that they make an effort to implement that policy.


Perhaps the most important part of e-discovery happens when the judge is not around. Under the amendments to the Federal Rules of Civil Procedure put in place at the end of 2006, opposing counsel must meet and confer about potential discovery issues under Rule 26. After that, Rule 16 mandates a meeting before the judge to discuss any agreements by the parties regarding e-discovery. “You see a lot of wasted opportunities in many cases coming out of the Rule 26 meet and confer and the Rule 16 conference with the court,” says Judge Lee H. Rosenthal of the U. S. District Court for the Southern District of Texas. “In many cases lawyers treat the Rule 26 conference like a drive-by conference and there is no meaningful attempt to address these issues.”

Judges say the No. 1 problem is that lawyers come to the Rule 16 meeting without having learned anything about the electronic records that will be in dispute in many cases. “You can’t come to the judge and just say ‘I don’t know.’ The fact is you need to know what you don’t know,” says Chief Magistrate Judge Paul Grimm of the U.S. District Court for Maryland. “But more than that, you have to know what is reasonable to ask for. You can’t come to the judge and ask for everything and a pony.”

The plan also needs to be flexible, because no one knows how much digital evidence will be involved in a case, and where those records might be. “During search and review, know how the case is evolving,” says Bencivengo. “Make sure your junior people are in the loop, informed and looking for the right things. You can’t wait until the end to ask to perform a forensic examination that will cost more time and money.”

She says that lawyers need to agree about what documents and data types to preserve, what searches to perform on those electronic documents and what information is likely to be inaccessible. A failure to come to agreement on such issues is the first step toward upsetting the judge. “If you don’t address things and after six or seven months you’re still arguing over a protective order, that would annoy me,” says Bencivengo. “The amount of information has grown exponentially, but the time frame to acquire and search it is the same. You’re doing your clients a disservice if you are engaged in counterproductive discovery battles.”


All the jurists interviewed for this article agree that the way to have a successful “meet and confer” is to fundamentally change the way opposing counsel have worked together for hundreds of years. “I think the old model of competing motions and adversarial discovery is counterproductive,” says Grimm. “The notion that you can go at it tooth and nail and don’t have to turn over a damn thing doesn’t work. It’s great to be a zealous advocate, but with electronically stored information you have to be a problem solver, not a fighter.”

Judges are willing to help out in this endeavor. Rosenthal says that she’s begun to hold meetings with opposing counsel even before the meetings mandated by the Federal Rules of Civil Procedure, which has helped limit disputes. Instead of fighting over what is discoverable, lawyers need to share information about the potential universe of discoverable documents and to find a workable plan. “It is important that the sides understand that what’s needed is creative thought given to the process and more information exchange,” she says.


The amendments to the Federal Rules of Civil Procedure regarding e-discovery got a lot of attention when they went into effect in 2006. But Rosenthal says one of the most important rules lawyers should pay attention to went into effect in 1983. Rule 26(b)(2)(C) says courts should consider whether the discovery expense outweighs the benefit. When lawyers complain that the volume and complexity of discovery can make it prohibitively expensive to go to trial, this rule is their best friend.

While it is important that litigants enjoy the right to discovery, judges are sensitive to the burden it can impose. “If we don’t get this right, we’re doing a huge disservice to the pursuit of justice in this country,” says Grimm. “You have to agree if the potential award in a particular case is somewhere between zero and a million dollars, it doesn’t make sense to spend more than that on discovery.”

Judges are increasingly forced to grapple with the transaction cost of discovery and studying the best way to allocate resources for it. One of the best ways to control costs and speed a trial along is actually to spend the money on good outside experts. Those experts can make it clear to a court what digital evidence is really necessary for a given suit and which is not worth the time and effort to obtain for the case. “Get an expert; someone who’s the real deal and a problem solver,” says Grimm.


Perhaps the biggest concern lawyers have about discovery right now is how to protect privileged documents. The amendments to the Federal Rules of Civil Procedure allow for agreements to be put in place under which privileged documents that are inadvertently disclosed to the other side may be returned. Though defendants can sometimes get those documents back, there is currently no protection to prevent those documents from being used in other litigation.

Lawyers complain that it is impossible to properly screen millions of digital records for privilege in a short time frame. But judges say that until a new rule is put in place to prevent this, litigants will have to accept that some privileged documents may be inadvertently produced. “You have to live with a less than foolproof solution to privilege,” says Grimm. “The problem is the only way to fix this problem is through common law or an act of Congress. Until something happens, privilege will be problematic, but you can’t just not produce documents because you’re afraid of inadvertent disclosure.”

The only solution is to work with the judge to come up with the best solution all parties can agree on. In the recent Victor Stanley Inc. v. Creative Pipe Inc. case, Grimm ordered that, even though the defense inadvertently produced privileged electronic documents, they could not demonstrate that they had taken reasonable measures to protect against the disclosures. He blamed that failure on the defense for not coming up with a better plan to protect privilege early, so the plaintiffs are now free to keep and use those documents. “If you try to tell me something is privileged and you want it back but there was no effort to screen for privilege, I can’t protect you,” says Bencivengo.


One case that’s caused trepidation among litigators is Qualcomm v. Broadcom, which imposed sanctions on Qualcomm attorneys for failing to produce e-mails. But judges assure lawyers that while there are occasionally high-profile cases in which lawyers are sanctioned and their clients fined millions of dollars, those cases are exceedingly rare.

Unless lawyers are actively hiding or destroying documents, it’s difficult to get to that point. “Here’s what I have observed — courts have done a very good job of rejecting exaggerated sanction claims unless there has been a deliberate manipulation of systems,” says Rosenthal. “But at the same time you see over-preservation because of apprehension about sanctions. I’m telling you, as long as you have a defensible, documented plan for ESI in place, you shouldn’t have to worry about it.”

Jason Krause is a freelance journalist based in Wisconsin.