Leonardo da Vinci

6.176 A number of submissions suggested that the use of discovery plans in Federal Court proceedings should be supported by greater guidance about the matters that should be addressed.²²⁸ There were also suggestions made in several submissions about certain steps the parties should take in the process of developing discovery plans,²²⁹ which might be included in such guidelines.

6.177 In addition, submissions provided examples of particular approaches to discovery that have proved effective and efficient, as well as certain methods which had caused inefficiencies in proceedings.²³⁰ Such examples might also be captured in guidelines to inform the parties in relation to the reasonableness and proportionality of discovery plans, enhancing certainty of expectation and, in turn, consistency in practice.

6.178 As pointed out by Legg, the advantage of having these kinds of guidelines in place is that ‘it will avoid matters being overlooked or omitted because of a lack of knowledge or inadvertence’.²³¹

6.179 There is a variety of existing guidelines, checklists, directions and pro-forma documents relating to discovery in Australia and overseas which could be referenced in the development of a discovery plan, including:

• the Federal Court’s Pre-Discovery Conference Checklist and draft Document Management Protocols;²³²

• the UK’s Practice Direction 31B and Electronic Documents Questionnaire;²³³

• the Ontario Bar Association’s Checklist for Preparing a Discovery Plan and Annotated E-Discovery Checklist (with suggestions on how to minimize e-discovery costs);²³⁴

228 Association of Legal Support Managers (Qld), Submission DR 29, 11 February 2011; Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011; Allens Arthur Robinson, Submission DR 10, 19 January 2011; M Legg, Submission DR 07, 17 January 2011.

229 Association of Legal Support Managers (Qld), Submission DR 29, 11 February 2011; Law Society of NSW, Submission DR 22, 28 January 2011; Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011.

230 Association of Legal Support Managers (Qld), Submission DR 29, 11 February 2011; Law Council of Australia, Submission DR 25, 31 January 2011; M Legg, Submission DR 07, 17 January 2011.

231 M Legg, Submission DR 07, 17 January 2011.

232 See Practice Note CM 6: Electronic Technology in Litigation (Federal Court of Australia), [11].

233 Civil Procedure Rule Committee (UK), Practice Direction 31B: Disclosure of Electronic Documents.

234 Ontario E-Discovery Implementation Committee, Model Document #9: Checklist for Preparing a Discovery Plan (2010) <http://www.oba.org/En/publicaffairs_en/E-Discovery/model_precedents.aspx> at

• the US Electronic Discovery Reference Model;²³⁵ and

• the Practical Discovery Guidelines for Lawyers published by the Association of Legal Support Managers (Queensland).²³⁶

6.180 In addition, proposed amendments to the High Court Rules (NZ) would provide a discovery checklist and examples of listing and exchange protocols.²³⁷

6.181 The following section of this chapter outlines a number of matters that could be included in guidelines for discovery plans, based on comments in submissions and existing guidance in relation to discovery.

Identification of repositories of documents

6.182 Contributors from a group of large law firms submitted that, as an initial step in the development of a discovery plan, the party giving discovery should provide the party seeking discovery with information about the places that might be searched and any issues with accessing those locations.²³⁸ The submission proposed that, in respect of a party’s own discovery, the party should be required to set out:

• a summary of the location of potentially discoverable documents (eg archives, computer servers, email accounts, back up tapes) and the relationship between them (ie are the same documents likely to be stored in more than one place);

• a list of individuals, employees, agents or contractors who may hold relevant documents (categories may therefore be framed by reference to the individuals who hold, created or received documents so as to avoid the need for a more extensive and costly search); and

• any difficulties or issues that they foresee arising with the discovery of documents. For example costs, time, confidentiality, accessibility of ESI and any potential gaps in ESI where, for example, emails are deleted after a certain amount of time.²³⁹

6.183 Similarly, the Law Society of New South Wales submitted that a ‘search protocol’ should be exchanged between the parties which identifies the possible repositories of discoverable documents:

Such a protocol document would:

• identify each and every database which may contain relevant discoverable material; and

3 March 2011; Ontario E-Discovery Implementation Committee, Model Document #8: Annotated E-Discovery Checklist (2010) <http://www.oba.org/En/publicaffairs_en/E-Discovery/model_precedents.

aspx> at 3 March 2011.

235 EDRM: The Electronic Discovery Reference Model (2010) <http://www.edrm.net> at 25 October 2010.

236 Association of Legal Support Managers (Qld), Practical Discovery Guidelines for Lawyers (2010)

<http://www.alsm.com.au/> at 3 March 2011.

237 High Court Amendment Rules (No 1) 2011 (NZ), Schedule.

238 Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011.

239 Ibid.

6. Limited Discovery and Discovery Plans 181

• record detailed information regarding the level of effort in terms of time and cost that would be required in order to retrieve, review and produce discoverable material from each of those identified document repositories.²⁴⁰

6.184 The Law Council also suggested that planning a discovery process should involve ‘identifying the systems used and types of records held by the client, and the physical custodians’.²⁴¹

6.185 The Law Society argued that such planning would ‘enable the Court to make determinations that reduce costs by ensuring that the parties are only required to undertake reasonable and proportionate searches having regard to a cost/benefit analysis’.²⁴²

6.186 As noted by the Law Council and in other submissions, parties might use the Electronic Documents Questionnaire attached to Practice Direction 31B (UK) to identify potential repositories of discoverable documents.²⁴³ The use of this questionnaire is also recommended in the Practical Discovery Guidelines for Lawyers published by the Association of Legal Support Managers (Queensland).²⁴⁴

6.187 Another way for the party seeking discovery to pinpoint potential repositories of relevant documents might be to conduct an oral examination of representatives of the party giving discovery about their document management systems and record retention policies. Some submissions suggested that the Court and the opposing party should be able to examine a party as to their knowledge and possession of relevant documents.²⁴⁵ For example, the Australian Government Solicitor submitted that:

at a theoretical level at least, we can see the use of depositions directed to identifying evidence and documents that an opposing party may hold as a potentially useful adjunct to the discovery process. Depositions may allow a party who is considering seeking discovery to better assess what documents the other party has in its possession and whether it is relevant to a material issues in dispute. This could assist in reducing speculative discovery. One potential advantage of depositions is that answers are given on oath which may give a party seeking discovery the confidence to be more precise in targeting documents to be discovered without fear that potentially relevant documents or classes of documents might be missed.²⁴⁶

6.188 The use of pre-trial oral examinations is discussed further in Chapter 10.

240 Law Society of NSW, Submission DR 22, 28 January 2011.

241 Law Council of Australia, Submission DR 25, 31 January 2011.

242 Law Society of NSW, Submission DR 22, 28 January 2011.

243 Association of Legal Support Managers (Qld), Submission DR 29, 11 February 2011; Law Council of Australia, Submission DR 25, 31 January 2011; Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011.

244 Association of Legal Support Managers (Qld), Practical Discovery Guidelines for Lawyers (2010)

<http://www.alsm.com.au/> at 3 March 2011.

245 Australian Government Solicitor, Submission DR 27, 11 February 2011; C Enright and S Lewis, Submission DR 03, 12 January 2011.

246 Australian Government Solicitor, Submission DR 27, 11 February 2011.

Identification of relevant categories of documents

6.189 The Federal Court’s Pre-Discovery Conference Checklist currently provides that parties should agree on the scope of discovery having regard to Practice Note CM 5, which asks whether discovery should be limited to defined categories of documents.²⁴⁷ 6.190 The Law Council submitted that standard discovery in intellectual property disputes should be limited to certain pre-defined categories of documents:

Intellectual property cases often involve the discovery of a large number of technical documents that are not readily transparent to lawyers. It is often the case that such documents were created in foreign jurisdictions and over a long period of time, potentially over 100 years in some copyright cases and typically 15–20 years in patent cases. The use of pre-existing categories will reduce discovery disputes and enable parties to approach litigation with a reliable expectation as to the scope and cost of discovery. Discovery should only be expanded beyond these pre-defined categories if justified by special circumstances.²⁴⁸

6.191 In relation to patent cases, the Law Council referred to the decision in Wellcome Foundation v VR Laboratories (Aust) Pty Ltd, in which Aitkin J commented that:

[D]iscovery should be confined to research and development and experiments before the priority date … [I]f discovery relating to experiments is to be made it should not relate to a period later than the priority date.²⁴⁹

6.192 The Law Council submitted that, within these categories it would expect the following documents to be discovered:

• documents summarising the invention;

• the inventor’s notebooks; and

• minutes of relevant meetings of or with the inventor.²⁵⁰

6.193 In relation to trade mark cases, the Law Council submitted that standard discovery should exclude documents relating to the extent of use of a mark or its commercial success, unless this is a real issue in dispute—for example, in cases under ss 60 or 120(3) of the Trade Marks Act 1995 (Cth).²⁵¹ It also submitted that documents relevant to the quantum of damages in trade mark cases should be excluded from discovery until after a determination of infringement has been made.²⁵²

Identification of excluded documents

6.194 The Federal Court’s Pre-Discovery Conference Checklist provides that parties should consider any sources or categories of discoverable documents that are to be excluded from the conduct of a reasonable search.²⁵³ As discussed in Chapter 5, this

247 Practice Note CM 6: Pre-Discovery Conference Checklist (Federal Court of Australia), [2.1]; Practice Note CM 5: Discovery (Federal Court of Australia), [1(c)].

248 Law Council of Australia, Submission DR 25, 31 January 2011.

249 Ibid, citing Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd [1981] HCA 12.

250 Ibid.

251 Ibid.

252 Ibid.

253 Practice Note CM 6: Pre-Discovery Conference Checklist (Federal Court of Australia), [3.1].

6. Limited Discovery and Discovery Plans 183 might include, for example, documents that were once but have not been in the parties’

control for more than six months prior to the commencement of proceedings.

6.195 The group of large law firms submitted that, unless the Court ordered otherwise, discovery should be limited to data that was ‘reasonable accessible’ in the course of the discovering party’s business.²⁵⁴ The group also argued that, if the party seeking discovery requested data that was not ‘reasonably accessible’, it should be required to demonstrate that its discovery was necessary.²⁵⁵

6.196 A similar proposal was made by Allens Arthur Robinson, arguing that a rebuttable presumption should be imposed that certain categories of documents need not be searched or produced in the absence of demonstrated need—such as documents stored on backup tapes.²⁵⁶

6.197 Excluding data on backup tapes from discovery in appropriate cases would be consistent with the approach taken in the US. The Federal Rules of Civil Procedure provide that a party need not discover electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost.²⁵⁷ This is in line with the principles for electronic document production, published by the Sedona Conference in the US:

The primary source of electronic data and documents for production should be active data and information purposely stored in a manner that anticipates future business use and permits efficient searching and retrieval. Resort to disaster recovery backup tapes and other sources of data and documents requires the requesting party to demonstrate need and relevance that outweigh the cost, burden, and disruption of retrieving and processing the data from such sources.²⁵⁸

6.198 The group of large law firms also set out a number of relevant factors that the Court might take into account in determining the issue of whether requested documents are ‘reasonably accessible’. The Court might consider, for example:

(a) the purposes for which the data is being held in its current format (eg why has it been stored in this way/for what purpose?);

(b) the party’s historical use of the data (eg do they access it regularly?);

(c) the format of the data (eg data which is stored in such a way as to require forensic expertise to restore it to usable format); and

(d) the method(s) required to access the data and the time and costs involved in accessing the data.²⁵⁹

254 Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011.

255 Ibid.

256 Allens Arthur Robinson, Submission DR 10, 19 January 2011.

257 Federal Rules of Civil Procedure 2009 (US) r 26(b)(2).

258 The Sedona Conference, The Sedona Principles: Best Practices, Recommendations and Principles for Addressing Electronic Document Production (2004) <http://www.thesedonaconference.org/> at 18 March 2011.

259 Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011.

6.199 When considering whether the discovery of documents that are not ‘reasonably accessible’ is justified in the circumstances, the court might consider, for example:

(a) whether the burden or expense outweighs the data’s likely benefit or relevance;

(b) whether the request is unduly cumulative or duplicative;

(c) the quantity of data involved;

(d) a party’s inability to obtain the same or equivalent information from more accessible sources;

(e) the magnitude of the issues at stake in the litigation; and (f) the resources of the parties involved.²⁶⁰

6.200 Where the Court decides that discovery should be given of documents that are not ‘reasonably accessible’, it was argued that the Court should consider ‘shifting’ the cost of accessing the data on to the requesting party.²⁶¹ This issue, and the factors which the Court might consider in this regard, are discussed in Chapter 9.

Strategies for reasonable searches

6.201 The Federal Court’s Pre-Discovery Conference Checklist currently provides that parties should agree upon the strategies they will use for conducting a reasonable search to locate discoverable documents.²⁶²

6.202 A range of computer software can be used to facilitate a ‘reasonable search’ of electronic databases of documents, as one submission explained:

Advanced concept searching software, and more recently predictive coding technology (which is much more accurate than keyword searching), can quickly process large quantities of data and assist in identifying records relating to particular issues. This can be used not only to eliminate clearly irrelevant material, but can significantly reduce the amount of review time required.²⁶³

6.203 A number of submissions suggested that discovery plans should specify the terms or functionality of any automated searches which parties will use to interrogate electronic databases of documents.²⁶⁴ For example, Allens Arthur Robinson submitted that, where the use of automated searches is appropriate, the parties should agree upon:

• the grouping of documents by concept and the methodology for such categorisation; and

• the nature of searches which may be carried out.²⁶⁵

260 Ibid, citing r 26(b)(2) of the Federal Rules of Civil Procedure (US).

261 Ibid, citing Zubulake v UBS Warburg, 229 FRD 422 (SDNY, 2004), [32] and [323], where the court considered whether and to what extent the cost of restoring backup tapes should be shifted to the party requesting them.

262 Practice Note CM 6: Pre-Discovery Conference Checklist (Federal Court of Australia), [3.1].

263 Association of Legal Support Managers (Qld), Submission DR 29, 11 February 2011.

264 Ibid; Contributors from the Large Law Firm Group, Submission DR 21, 25 January 2011; Allens Arthur Robinson, Submission DR 10, 19 January 2011.

265 Allens Arthur Robinson, Submission DR 10, 19 January 2011.

6. Limited Discovery and Discovery Plans 185 6.204 Allens Arthur Robinson also suggested that parties should agree to use a common search engine when carrying out any agreed automated searches for documents. This would ensure that:

the results obtained from parties’ searches are as consistent as is technically possible.

This should make parties more confident of the search results and may reduce disputes and related expenses, particularly when used as an exclusionary tool.²⁶⁶

De-duplication of documents

6.205 Allens Arthur Robinson proposed that guidelines should establish standards for the de-duplication of documents, to form a basis for the market to create a uniform method of eliminating duplicate documents from discovery, explaining that:

Currently, de-duplication is carried out using an algorithm such as MD5 or SHAH1.

Each electronic file receives a unique value with such values used to identify and eliminate duplicates from a data set. Presently, there are a number of different software applications and methods used to create these unique MD5 and SHAH1 values. The effect of this is that while a party can eliminate duplicates from their own data set, it is generally not possible to eliminate duplicates across other parties’

documents. Therefore, parties may well need to review documents received from an opposing party which are, in fact, duplicates of their own documents.²⁶⁷

6.206 To address this problem, Allens Arthur Robinson proposed that practice notes should prescribe certain fields that should be used to describe documents—such as those listed in sch 8 of the Advanced Document Management Protocol annexed to Practice Note CM 6—as well as the order in which those fields should be used in the process of identifying duplicate documents.²⁶⁸ The intention would be:

over time, for software developers to modify their tools so that the prescribed fields are utilised as a matter of course facilitating a consistent de-duplication process across the industry.²⁶⁹

Timetable and estimated costs of discovery

6.207 The Federal Court’s Pre-Discovery Conference Checklist provides that parties should agree on a timetable for discovery and exchange their best preliminary estimate of the costs associated with discovery.²⁷⁰

6.208 NSW Young Lawyers commented that discovery plans should specify, in particular, a timeline for the completion of discovery by the parties.²⁷¹

266 Ibid.

267 Ibid.

268 Ibid.

269 Ibid.

270 Practice Note CM 6: Pre-Discovery Conference Checklist (Federal Court of Australia), [6].

271 NSW Young Lawyers, Submission DR 19, 21 January 2011.

6.209 Several submissions supported including estimates of costs in discovery plans.²⁷² For example, the Law Council saw value

in the practitioners for a party, with a substantial discovery burden, being required to estimate the cost of discovery at an early stage and not only informing its client but also informing the party seeking discovery of that estimate. These estimates can then be a factor to be considered as to the reasonableness of discovery orders requested and the party seeking discovery cannot later complain if it loses and then finds it having to meet those costs.²⁷³

6.210 The Association of Legal Support Managers (Qld) commented that:

arguments as to costs will be significantly reduced if the parties exchange estimates of the costs of discovery at an early stage and before those costs are incurred. By exchanging such details, the parties and the Court will be better informed to make an assessment as to whether the proposed approach is proportionate. The Court could then make an informed decision as to whether costs should borne by the requesting party.²⁷⁴

6.211 The Association also noted that there are tools available which can provide a

‘snapshot’ of the number and types of records held by a party—which can be used to estimate the likely time and cost of discovery.²⁷⁵

ALRC’s views

6.212 The ALRC considers that establishing practical guidelines will enhance the accessibility of discovery plans. The provision of information enables litigants to understand their position, the options they have and to decide what steps to take.

Decisions made by parties and the Court as to the terms of discovery plans would have a direct effect on the course of litigation and the resolution of disputes. In addition to helping parties to develop effective and efficient discovery plans, guidelines may also play a role in assisting the Court when evaluating the appropriateness of a proposed discovery plan.

6.213 The ALRC recommends that Federal Court practice notes should provide a detailed set of best-practice guidelines on the formation and content of discovery plans.

These guidelines should: highlight particular matters to be addressed in discovery

These guidelines should: highlight particular matters to be addressed in discovery

In document 0. La geometría del agua La geometría del agua y la geometría de la arquitectura (página 52-63)