Case: 1:21-cv-02046 Document #: 45 Filed: 03/14/22 Page 1 of 12 PageID #:468
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Plaintiff and Counterclaim-Defendant,
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`DEAL GENIUS, LLC, a Delaware Limited
`Liability Company,
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`O2COOL, LLC, a Delaware Limited Liability
`Company,
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` Defendant and Counterclaim-Plaintiff.
`
`v.
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`Civil Action No.: 1:21-cv-2046
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`Judge: Honorable Joan B. Gottschall
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`Magistrate: Honorable Jeffrey Cole
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`Jury Trial Demanded
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`O2COOL’S REPLY IN SUPPORT OF ITS MOTION
`TO COMPEL DEAL GENIUS TO PRODUCE EMAILS
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`If you cut through the noise, Deal Genius’s Response (Dkt. 42, “Response”) to
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`O2COOL’s Motion to Compel (Dkt. 41, “Motion”) reveals that there is in fact a straightforward
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`solution to this discovery dispute – one that falls squarely within the rules governing this case
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`and their aims in balancing the two seemingly countervailing forces at issue: on one side, the
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`rights of O2COOL (the patent owner) to discover probative emails from Deal Genius (the
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`alleged infringer) versus, on the other side, protections for the party who brought this suit, Deal
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`Genius, from being unduly burdened in producing the requested emails.
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`As explained below, granting O2COOL’s Motion would address O2COOL’s rights to
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`receive email discovery and would not unduly burden Deal Genius, because: (1) the volume of
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`emails in this patent infringement suit, even under Deal Genius’s questionable total hit count, is
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`not excessive; (2) Deal Genius’s hit count does not account for de-duplication, which “can
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`Case: 1:21-cv-02046 Document #: 45 Filed: 03/14/22 Page 2 of 12 PageID #:469
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`reduce the number of documents to be reviewed by as much as 90 percent,”1 and thus the actual
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`email count after standard ESI processing tools are applied would likely be a fraction of the
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`numbers presented in Deal Genius’s Response; (3) the LPR ESI, in any event, accounts for a
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`pragmatic solution that addresses Deal Genius’s concern, which is to allow the producing party
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`to provide the entire email set with the understanding that “[t]he mere production of ESI in a
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`litigation as part of a mass production shall not itself constitute a waiver for any purpose;”2 and
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`(4) Deal Genius appears to have made a material mistake in its search of Term 1, which suggests
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`that the proper hit count for Term 1 is almost certainly much lower than the approximately
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`35,000 cited in its Response.
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`Moreover, O2COOL recently discovered that Deal Genius is selling a different necklace
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`fan, and in the listing for that product alone, Deal Genius references O2COOL in three different
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`ways (including with a “0” and with a space between “o2” and “cool”). Deal Genius never
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`disclosed the sales of this alternate O2COOL-branded necklace fan, which O2COOL was
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`unaware of until this recent discovery and which further highlights the need for Term 1 (variants
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`of O2COOL) and Term 2 (neck! & fan).
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`In sum, granting O2COOL’s Motion would not prejudice Deal Genius, while not granting
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`O2COOL’s Motion, or granting a modified set of terms from those sought in O2COOL’s
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`Motion, would increase the likelihood that important, possibly even smoking gun, emails are not
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`disclosed to O2COOL. O2COOL respectfully requests that the Court grant its Motion.
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` https://www.kldiscovery.com/blog/3-de-duplication-options-how-do-you-choose (see also, Ex. C at 2).
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` N.D. Ill. LPR ESI 1.4(b).
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`I. Even Assuming Deal Genius’s Improbable Hit Count Numbers Are Accurate, The
`Hit Counts Are Not Excessive For A Patent Case.
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`The present motion to compel concerns five search terms:
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`1
`2
`3
`4
`5
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`Search Terms3
`O2COOL OR 02COOL OR O2! OR (O w/2 2) OR 02C! OR (02 w/3 C)
`neck! & fan
`infring!
`(1430 OR 1431 OR 1432 OR 1433 OR 1434 OR 1435 OR 1436 OR 1437 OR 1438 OR 1439)
`fan & ("copy " OR copie! OR "copying")
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`Term 5 is not disputed.4 For Term 2, Term 3, and Term 4, Deal Genius contends each
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`results in around 8,000 hits. (Dkt. 42 at 12-14). Deal Genius alleges that Term 1 resulted in
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`approximately 35,000 hits. (Id. at 11). Thus, based on Deal Genius’s representations (which are
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`not accompanied by a declaration or other evidence substantiating the number of hits obtained),
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`the absolute upper-limit of emails at issue would be around 59,000.
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`But the actual total hit count is likely to be significantly reduced once the emails are
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`processed as part of standard ESI production protocols since, based on Deal Genius’s
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`representations, the total hit count reflects email searching at the point of collection and thus
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`does not reflect an email collection in which standard ESI processing methods like email “de-
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`duplication” and “thread-suppression” are applied. As is commonly understood amongst
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`practitioners, “[e]ven the most basic culling techniques like deduplication can reduce your data
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`sizes by more than 40%,”5 and in fact, “de-duplication can reduce the number of documents to be
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` In the Conclusion section of O2COOL’s Motion, there was a typo in the chart that incorrectly stated
`Term 1. As seen in both the chart in the Section V (ARGUMENT) introductory paragraph of O2COOL’s
`Motion and also in Section V(A) (Term 1: O2COOL OR 02COOL OR O2! OR (O w/2 2) OR 02C! OR
`(02 w/3 C)) which specifically dealt with Term 1, the proper search string for Term 1 is what is reflected
`in the chart on the present page and that which is in Section V of the Motion. (See Dkt. 41 at 12).
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` 3
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` 4
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` Deal Genius’s Response states: “There is really no dispute on this term.” (Dkt. 42 at 14).
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` 5
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` https://www.logikcull.com/blog/less-data-less-oc-spend-5-effective-data-reduction-strategies-to-shrink-
`ediscovery-costs (see also, Ex. B at 2).
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`reviewed by as much as 90 percent.” 6 (emphasis added).
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`Given that the total hit count is comprised of hits from five Deal Genius custodians, de-
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`duplication and email thread-suppression are even more likely to reduce the overall number,
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`since it is likely that many of the hits consist of emails between Deal Genius custodians. For
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`example, in a scenario where DG Custodian 1 sends an email with the term “necklace fan” to DG
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`Custodian 2, DG Custodian 3, DG Custodian 4, and DG Custodian 5, Deal Genius’s current
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`count tallies that same email as five hits. But after the emails are collected and de-duplication is
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`applied, this would in fact be reduced to just one email, as de-duplication would eliminate the
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`other four. Moreover, in an instance where DG Custodian 2 hits the “Reply All” button and
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`sends an email that says, for example, “Received – see you at the meeting” to DG Custodians 1,
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`3, 4, and 5, the preliminary search would identify 10 hits, but after thread-suppression is applied,
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`these 10 would be reduced to a single email.
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`Therefore, the number of emails actually at issue here, even without de-duplication but
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`especially with it, is not an excessive volume of emails for a federal district court civil suit, let
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`alone for a patent infringement case.7 In the single case that Deal Genius has cited to support its
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`position that O2COOL’s search terms are overbroad under the District’s LPR ESI, Judge Valdez
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`explained that “the search terms generated over 300,000 email documents for a single
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`custodian.” (Dkt. 42-1 at 2). Extrapolating that number across five custodians, as a rough
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` https://www.kldiscovery.com/blog/3-de-duplication-options-how-do-you-choose (see also, Ex. C at 2).
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` O2COOL will not burden the Court with discussing the merits of this case here, but O2COOL informs
`the Court that (1) O2COOL disagrees with Deal Genius’s self-serving characterization of this case as a
`“simple one” that supposedly obviates the need for the email discovery typical of most every patent
`infringement case, and (2) in its Initial Disclosures (served on June 8, 2021), Deal Genius claimed its
`revenue from the Accused Product was $7,412; in the Response, Deal Genius states that “the accused
`product has a lifetime sales of less than $90,000,” i.e. a ten-fold increase in revenue in less than 9 months,
`during the pendency of this case. (see Dkt. 42 at 2).
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`measure of the universe of emails at issue in that case, the difference between the number of
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`emails at issue is by orders of magnitude: 1,500,000 there, versus <59,000 here.
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`Other cases from this District have rejected the position in Deal Genius’s Response and
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`have granted motions to compel email regarding search terms as broad or broader than
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`O2COOL’s. For example, in Sunoco Partners Mktg. & Term. L.P. v. U.S. Venture, Inc. et al.,
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`No. 1:15-cv-8178 (N.D. Ill. July 26, 2016), the Court granted the movant’s motion to compel
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`email production for search terms that included infring! (which is identical to O2COOL’s Term
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`3) and patent!. (See Combined Ex. A).
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`II. The LPR ESI Provides Protections And Alternative Approaches Should Deal
`Genius Want To Rely On Them.
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`First, understanding the total hit count will almost certainly be significantly lower than
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`the figure in Deal Genius’s Response, Deal Genius could, in any event, further reduce its alleged
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`burden by limiting its review to one for potentially-privileged emails. Under this approach,
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`which is a standard practice in ESI production, Deal Genius would (1) identify counsel and firms
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`it has retained; (2) run a search for those entities across the collection; (3) review those results to
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`determine which emails are in fact privileged and produce the non-privileged ones; and (4)
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`produce the non-privileged hits without a review burden. Given that Deal Genius has never been
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`in a patent lawsuit of any kind, nor does it own IP concerning necklace fans, the number of hits
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`for potential privilege is likely to be exceedingly low.8 But even assuming, implausibly, that 5%
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` 8
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` O2COOL’s Motion contains an error in Section V(C) wherein “IP infringement” instead of “patent
`infringement” was used. But the ultimate point is the same. A PACER search shows that Deal Genius has
`only been involved in three prior IP lawsuits, two copyright cases and one trademark case, all three of
`which were dismissed before a response to the complaint was filed. With minimal litigation occurring,
`Deal Genius can easily identify the attorneys who provided counsel as part of a potentially-privileged
`review set and significantly reduce its review burden to just a fraction of the overall number of hit count.
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`of the Deal Genius emails are potentially privileged, and using the unlikely upper-limit number
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`of 59,000, the entire potentially-privileged review set would be 2,950 emails, which is not overly
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`burdensome. For context, O2COOL reviewed (and on March 11, 2022, produced) 3,146
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`documents in response to Deal Genius’s requests for production.9
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`Even more, if Deal Genius is unwilling or unprepared to conduct a potentially-privileged
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`review of an email production set in a case that Deal Genius itself brought against O2COOL,
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`there is yet another solution: Deal Genius may rely on the express protections of the LPR ESI
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`afforded litigants for this circumstance. Specifically, LPR ESI 1.4(b) addresses Deal Genius’s
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`supposed concern (i.e. that it does not want to, or believes that it should not have to, expend
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`resources conducting a privilege review of the email set returned by O2COOL’s search terms) by
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`expressly providing that “[t]he mere production of ESI in a litigation as part of a mass production
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`shall not itself constitute a waiver for any purpose.”10 (N.D. Ill. LPR ESI 1.4(b)).
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`Thus, the LPR ESI – which the District implemented to alleviate discovery disputes, not
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`to invite them – not only contemplates the production of emails via email requests that include
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`“search terms beyond the limits agreed to by the parties or granted by the Court” by stating that
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`“the reasonable costs caused by such additional discovery” are to be covered by the requesting
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`party, but the rules also expressly account for, and protect against, inadvertent disclosure of
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` 9
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` To date, Deal Genius has produced a total of 22 total documents in response to O2COOL’s requests for
`production and email requests.
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`10 In its Response, Deal Genius feigns concern about relying on the LPR ESI and O2COOL’s express
`agreement to a claw-back provision, in part because Deal Genius claims its “concern is only heightened
`by the fact that O2COOL pasted portions of Deal Genius’s Attorney Eyes Only production in its publicly
`filed motion to compel.” (Dkt. 42 at 7 n.5). The Court will note that the entirety of the screenshot, which
`is an analysis of O2COOL’s product, is completely redacted except for the single line “Amazon’s Choice
`for ‘o2 cool personal fan’ and ‘personal fan necklace’” in both the Motion (Dkt. 41 at 2) and in Ex. A
`(Dkt. 41-1 at 3).
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`privileged emails made as part of a “mass production.” Further, O2COOL has given Deal Genius
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`express assurances to this end, including on December 3, 2021, stating (Dkt. 41-9 at 5-6)11:
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`III. Deal Genius’s Purported Hit Counts Are Likely Wrong.
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`Additionally, there are certain inconsistencies that raise significant doubts about Deal
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`Genius’s alleged hit counts – which, as noted, were not accompanied by a declaration or other
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`evidence substantiating the number of hits at issue – suggesting that the total hit count is likely to
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`be significantly lower than the 59,000 discussed above.
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`In the Response, Deal Genius claims the Term 1 identified in the Motion returns
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`approximately 35,000 hits (34,136 to be exact). (Dkt. 42 at 11). What does not add up, however,
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`is that on January 10, 2022, Deal Genius also claimed a different, broader iteration of Term 1
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`also “resulted in approximately 35,000 hits.” (Dkt. 41-1 at 6). But there is a material difference
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`between Term 1 identified in O2COOL’s Motion and the Term 1 contemplated on January 10.
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`Namely, as O2COOL explained in its Motion, the Term 1 search string identified in the Motion
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`“removes the term 02.” (italics in original) (Dkt. 41 at 12). As the Court may recall from the
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`February 14 Status Conference, in an attempt to cast O2COOL’s search terms as inherently
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`overbroad, Deal Genius made much of the fact that a prior iteration of Term 1 included the term
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`02 (zero-two). Deal Genius also previously represented that “[t]he string O2 OR 02, alone,
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`11 O2COOL would also agree to treat every email produced pursuant to the search as HIGHLY
`CONFIDENTIAL under the Protective Order.
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`results in 33,961 hits.” (See Dkt. 41 at 2-3, Dkt. 41-1 at 6). It beggars belief that a string which
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`includes the supposedly-overbroad term (02) contains the same number of hits as a very similar
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`string that does not contain that same supposedly-overbroad term:
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`Date
`January 10, 2022
`(Dkt. 41-1 at 6)
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`Search String
`O2COOL OR 02COOL OR “O2 ” OR
`“02 ” OR “O w/2 2 ” OR “0 w/2 2 ” OR
`O2C! OR 02C!
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`March 7, 2022
`(Dkt. 42 at 11)
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`O2COOL OR 02COOL OR (O2!) OR (O
`w/2 2 ) OR 02C!
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`Deal Genius representation
`“Deal Genius maintains its
`objections to the first search
`string, which resulted in
`approximately 35,000 hits.”
`“[This string] results in 34,136
`hits”
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`In view of the fact that these two strings each supposedly return the same number of hits,
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`it appears that Deal Genius confused the string that included the allegedly “inherently overbroad
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`term” 02 from January with the present string that does not include that term. Whatever the
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`reason, it is nearly certain that Term 1’s hit count is significantly lower than the approximately
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`35,000 alleged by Deal Genius in its Response.12
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`IV. New Information, Which Deal Genius Has Not Disclosed, Confirms The Need For
`Terms 1 and 2.
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`O2COOL recently discovered that Deal Genius is selling another necklace fan in addition
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`to the Accused Product, which is actually an O2COOL-branded necklace fan that Deal Genius
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`calls “Fan Necklace.” Deal Genius never disclosed this to O2COOL.
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`12 O2COOL also notes that it is simply odd that Terms 2, 3, and 4 – three very dissimilar search strings –
`each return around the same number of hits (~8,000), and in view of the Term 1 issue, raises questions
`about the accuracy of those numbers.
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`O2COOL explained in its brief the need to search for variants of “O2COOL” after
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`discovering via one of Deal Genius’s documents that Deal Genius sometimes refers to O2COOL
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`as something other than “O2COOL,” including, for example “o2 cool.” (Dkt. 41 at 2-3, 12). To
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`that precise point, in the newly-discovered and never-previously-disclosed Deal Genius listing,
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`Deal Genius refers to O2COOL under three different variants in just one single online
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`advertisement – two of the variants, including one that uses the number zero instead of the letter
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`O, and another that has a space after “o2”, are shown below:
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` Deal Genius did not disclose its selling of this necklace fan, which is subject to
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`O2COOL’s patents. O2COOL was unaware of Deal Genius selling this necklace fan and the
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`listing was only discovered by happenstance – had it not, and if emails pursuant to O2COOL’s
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`Term 1 and Term 2 are not produced, it seems likely that highly probative emails will be
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`shielded from O2COOL. This further highlights the importance that Deal Genius run searches
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`for the variants of O2COOL as identified in Term 1 and for neck! & fan as identified in Term 2.
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`V. Deal Genius’s Tactics Should Not Be Rewarded.
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`Over the course of four-plus months, Deal Genius has taken advantage of O2COOL’s
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`reluctance to involve the Court in a discovery dispute. By methodically suggesting, implying,
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`and at times even agreeing that a resolution for its email production was around the corner only
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`to eventually renege or refuse, Deal Genius on repeated occasion left O2COOL with two
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`unpalatable options: (1) move the Court for relief, or (2) further narrow its search requests and
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`risk missing important emails. Viewing Court involvement in a discovery dispute as a last resort,
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`O2COOL offered conditional compromises on various occasions, with the condition being that
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`Deal Genius quickly produce emails so that O2COOL could receive some documents in this
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`case. As a result, Deal Genius tried to whittle away O2COOL’s search terms such that the final
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`set of terms would be narrowed to the point that they would have likely missed highly probative
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`emails in Deal Genius’s possession and which Deal Genius would have to produce under almost
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`any other circumstance. Significantly, Deal Genius never did produce emails pursuant to those
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`narrowed terms, which, after the February 14 Status Conference, resulted in the present motion
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`being filed with the Court.13
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`Undeterred after forcing O2COOL’s hand to file this motion, Deal Genius now seeks to
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`further leverage these tactics by presenting to the Court the false and misleading narrative that
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`the search terms were largely agreed upon and that there were “just two disputes between the
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`parties” left that required resolving. Deal Genius suggests it should only have to produce emails
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`pursuant to the most recent narrowed requests and that it should receive 12 search terms for
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`email requests it has yet to serve. This would be fundamentally unfair to O2COOL, who has
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`repeatedly explained to Deal Genius that O2COOL’s five search strings equal five search terms –
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`13 As can be discerned by the amount of time and the number of attempts that O2COOL spent making
`proposals for compromise, O2COOL has been extremely reluctant in involving the Court in this matter.
`This Motion was only filed with the Court after the issue came up during the February 14 Status
`Conference and the Court provided a briefing schedule in view of the parties’ impasse. (See Dkt. 39).
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`not 11 or 12 as Deal Genius has claimed. In fact, O2COOL predicted that Deal Genius was
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`intending to do what it in fact is trying to do here (see Dkt. 41-1 at 1-2):
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`The Court should not reward Deal Genius’s recalcitrance by forcing O2COOL to only
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`receive emails pursuant to the narrowed search terms that O2COOL only suggested as a potential
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`compromise in order to try to get some documents from Deal Genius, quickly, without having to
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`involve the Court. And then also, as an added bonus, then gifting Deal Genius seven additional
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`search terms so that Deal Genius, with a clean slate, can craft 12 distinct search strings. This
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`would prejudice O2COOL and would be an inequitable boon for Deal Genius, who could have
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`resolved this matter many times without forcing the present motion practice.
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`A more just approach would be to grant O2COOL’s Motion, because as explained in the
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`preceding sections, Deal Genius will not, in reality, be prejudiced despite its protestations, and
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`further, Deal Genius has a number of options in collecting and producing the emails that are
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`available to it.
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`VI. Conclusion
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`For the reasons set forth herein and in the Motion, O2COOL respectfully requests the
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`Court grant O2COOL’s Motion to Compel Deal Genius produce emails pursuant to the
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`following five search terms:
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`1
`2
`3
`4
`5
`
`Search Terms
`O2COOL OR 02COOL OR O2! OR (O w/2 2) OR 02C! OR (02 w/3 C)
`neck! & fan
`infring!
`(1430 OR 1431 OR 1432 OR 1433 OR 1434 OR 1435 OR 1436 OR 1437 OR 1438 OR 1439)
`fan & ("copy " OR copie! OR "copying")
`
`Dated: March 14, 2022
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`Respectfully submitted,
`
`By: /s/ Sartouk H. Moussavi
`Michael A. Parks, IL 6217230
`Sartouk H. Moussavi, IL 6313554
`THOMPSON COBURN LLP
`55 East Monroe Street, 37th Floor
`Chicago, IL 60603
`P: (312) 346-7500; F: (312) 580-2201
`mparks@thompsoncoburn.com
`smoussavi@thompsoncoburn.com
`
`Attorneys For Defendant and Counterclaim-
`Plaintiff O2COOL, LLC
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that all counsel of record who are deemed to have
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`consented to electronic service are being served with a copy of this document via the Court’s
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`CM/ECF system on March 14, 2022.
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`/s/ Sartouk H. Moussavi
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