Thursday, May 9, 2013

U.S. court rules Google must disclose to Apple search terms used in discovery in Samsung case

In mid-April I reported that "Apple called calls out Google on flawed search methodology, responsibility for Android's infringement". This was not about Google's Internet search engine but about a discovery dispute in the second California Apple v. Samsung case. Apple's patent infringement allegations relate to Android-based devices, and while some of the infringement contentions involve Samsung's proprietary extension built on top of Google's Android operating system, others don't. That's why Google is a key source of documents relevant to the infringement issues in that case. Apple was thoroughly disappointed by Google's production (i.e., delivery) of documents and attributed the scarcity of search results to the use of suboptimal search terms. Given Google's expertise in search, this could only be intentional, of course.

Magistrate Judge Paul S. Grewal, to whom District Judge Lucy Koh has referred the discovery issues in the two Apple v. Samsung cases before her, has now granted Apple's motion to compel Google to "produce search terms and a list of custodians that Google used in response to requests for production Apple served on it" (this post continues below the document):

13-05-09 Order Granting Apple Motion to Compel Google to Provide Search Terms

The following clarification of the scope of Apple's motion is important:

"Apple at this time is not seeking to compel more complete production from Google nor is it directly opposing Google's objections to the requests. Apple's request is far more basic: it wants to know how Google created the universe from which it produced documents. Using this information, Apple wants to evaluate the adequacy of Google's search, and if it finds that search wanting, it then will pursue other courses of action to obtain responsive discovery."

In other words, Google may ultimately get some unsolicited guidance on effective search terms from Apple, and it may then be required to apply those terms in order to come up with more comprehensive responses to Apple's questions. The fact that Google didn't want to disclose these terms may be attributable to some shortcomings (of those terms) it would have preferred to hide.

Interestingly, both parties cited all sorts of other cases, but Judge Grewal himself found an "instructive" case that neither party cited to: DeGeer v. Gillis (Northern District of Illinois, case no. 09-cv-06974). That ruling stresses that transparency and collaboration is essential to meaningful, cost-effective discovery. Google pointed to its non-party status, which is also a contentious issue in connection with Google's amicus brief supporting Samsung at the Federal Circuit against Apple's pursuit of an injunction and didn't persuade the court in California to deny Apple's discovery request. Even the fact that Apple itself could have been more cooperative only resulted in an admonishment by Judge Grewal, but the issue he had to resolve is whether Google had to disclose those search terms (and custodians), and that's what he's just ordered it to do.

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