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Court Criticizes Model eDiscovery Order, Spotlights Advanced Search Methodologies

One of the more significant case law developments in recent months involves an order that U.S. Magistrate Judge Mitchell D. Dembin issued in NuVasive, Inc. v. Alphatec Holdings, Inc. addressing a search term and custodian dispute in a patent litigation suit. Judge Dembin’s order, which criticizes email discovery provisions from a model eDiscovery order, spotlights the importance of both understanding and using advanced search methodologies and analytics tools in eDiscovery.

NuVasive v. Alphatec Holdings

In NuVasive, the parties had a “general agreement” to abide by the Model Order Governing Discovery of Electronically Stored Information in Patent Cases, a set of electronic discovery guidelines that the Federal Circuit Advisory Council promulgated over eight years ago. The provisions in the Model Order addressing email discovery, which limit a requesting party to five custodians (which it must identify) and five search terms, gave rise to the parties’ discovery dispute. In reliance on the Model Order, plaintiff moved to compel defendants to use the search terms it designed. Plaintiff also sought to determine the appropriateness of the custodians that it identified.

The court rejected plaintiff’s motion, finding its reliance on the Model Order was misplaced given the Order’s systemic deficiencies regarding email discovery. As an initial matter, the court determined that the Model Order’s disclosure and limitation mandates relating to custodians and search terms to be inconsistent with the strictures of Federal Rule of Civil Procedure 34, which do not require “a requesting party to identify custodians or search terms.”

The court next observed that the Model Order contravened eDiscovery best practices as memorialized in The Sedona Principles. [1] By coercing requesting parties to unilaterally designate custodians and develop search terms, the court found the Model Order to be inconsistent with Sedona Principle 6, which empowers the responding party to handle the production of its information, and Sedona Principle 3, which encourages parties “to reach agreement regarding production of electronically stored information.”

In closing its order, the court criticized the Model Order for its exclusive reliance on search terms as the approach for addressing email discovery. While observing that “search terms have their place,” the court explained that “electronic discovery has moved well beyond search terms” and that the Model Order’s exclusive reliance on this one search methodology made it “obsolete.”

Lessons from NuVasive 

The NuVasive decision is instructive on multiple levels. NuVasive calls into question the continuing viability of the Model Order guidelines for email discovery in patent litigation. Drawing on criticisms that Ralph Losey offered many years ago on the Model Order’s reliance on arbitrary search term restrictions and blind keyword searches, NuVasive counsels parties to follow both the Federal Rules of Civil Procedure and the “learned views” from The Sedona Principles on electronic discovery, including the development of search terms.

NuVasive also emphasizes the need for counsel to understand and use search methodologies and analytics tools beyond search terms. The availability of technology-assisted review (TAR), email threading, concept search, near duplicate identification, data clustering, and other search methods and tools underscores Judge Dembin’s declaration that “electronic discovery has moved well beyond search terms.” Facility with other methodologies and tools will inevitably lead to better results in terms of cost, efficiency, and effectiveness in discovery process.


[1] See  The Sedona Principles, Third Edition: Best Practices, Recommendations & Principles for Addressing Electronic Document Production, 19 Sedona Conf. J. 1 (2018).

Philip Favro
Philip Favro
Philip Favro acts as a trusted advisor to organizations and law firms on issues surrounding discovery and information governance. Phil provides guidance on data preservation practices, litigation holds, data collection strategies, and ESI search methodologies. In addition, he offers direction to organizations on records retention policies and the need to manage dynamic sources of information found on smartphones, cloud applications, and social networks. Phil is available to serve as a special master on issues related to electronic discovery. Phil is a nationally recognized thought leader and legal scholar on issues relating to the discovery process. His articles have been published in leading industry publications and academic journals and he is frequently in demand as a speaker for eDiscovery education programs. Phil is a member of the Utah and California bars. He actively contributes to Working Group 1 of The Sedona Conference where he leads drafting teams and serves as the Steering Committee project manager. Prior to joining Driven, Phil practiced law in Northern California where he advised a variety of clients regarding business disputes and complex discovery issues. He also served as a Judge Pro Tempore for the Santa Clara County Superior Court based in Santa Clara, California.
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