By Johnny Lee | Follow Johnny Lee on Twitter @forensicupdate
In a move designed to stem the escalating costs of electronic discovery, the U.S. Court of Appeals for the Federal Circuit recently adopted a Model Order that sets out requirements designed to limit the scope and impact of eDiscovery in patent cases. In a September 2011 presentation, Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit unveiled a Model Order Regarding E-Discovery in Patent Cases (“Model Order”).
Judge Rader stated last September (at the joint conference of the Federal Circuit and Eastern District of Texas) that the Model Order will serve as an aid to district courts to enforce “responsible, targeted use of eDiscovery.” According to Chief Judge Rader, the Model Order was drafted by special committee of the Advisory Council for the Federal Circuit and was designed to achieve the efficiencies achieved via Federal Rule of Civil Procedure (“FRCP”) Rule 30 (which limits the number of depositions that may be taken by each party).
The Model Order contains discrete provisions orchestrated to minimize expensive, overbroad, and time-consuming eDiscovery requests by establishing a process by which parties should exchange information, including electronically stored information (“ESI”). Under the Model Order, parties are required to exchange “core documentation” prior to any request or production of electronic mail. This core documentation includes related to the underlying patent and it prior art as well as the allegedly infringing product.
One of the most impactful provisions of the Model Order is its distinct — and very detailed — treatment of electronic mail. The Model Order actually presumes that general production requests shall not include email. This addresses one of the most significant aspects of discovery in patent litigation, as a good deal of what is typically reviewed in such matters begins (and often ends) with a review of email.
Should this presumption be surmounted in a given matter, the Model Order also seeks to limit the number of custodians from whom email shall be produced. “Each requesting party shall limit its email production requests to a total of five custodians per producing party for all such requests.” This too can have a tremendous impact on the scope, expense, and timeliness of document reviews within patent litigation.
These changes alone are substantial, but the Model Order goes on to limit the nature and scope of eDiscovery in several other notable ways:
- Email production requests should be limited to a total of five search terms, per custodian, per party;
- Absent a showing of good cause, parties should be exempted from producing metadata;
- Costs will be shifted for disproportionate production requests (consistent with FRCP Rule 26); and
- Inadvertent productions are deemed a non-waiver within the pending case or any other state/federal proceeding (consistent with Federal Rule of Evidence 502).
These changes codify a material shift in thinking that speaks directly to the root causes of overblown eDiscovery efforts in patent cases. Moreover, these changes should begin to bear fruit immediately in the form of reduced “digital haystacks” that parties are required to sift through in search of the proverbial needle(s) they seek.
Indeed, in a recent patent case in the Northern District of California, a U.S. Magistrate Judge granted a defense motion to govern discovery using an order quite similar to the Model Order (q.v., DCG v. Checkpoint Technologies). Interestingly, in that case, the plaintiff asserted that the Model Order should not be applied, as it was designed to limit discovery abuses by so-called “patent trolls” (as opposed to disputes between actual competitors in the marketplace). The Magistrate Judge disagreed with this assertion, stating that the Model Order neither deals exclusively with patent trolls nor exempts parties from discovery scope-limitations simply because they are market competitors.
This article originally appeared in Forensic Update, January 30, 2012
Johnny Leeis a management and litigation consultant, specializing in data analytics, computer forensics, and electronic discovery in support of investigations and litigation. A former attorney, he also provides advisory services to companies working to address complex data governance and records / information management issues. Johnny is a frequent speaker, panelist, and contributor on issues involving eDiscovery, Records and Information Management, Data Analysis, Business Intelligence, and the effective use (and risk management) of Information Technology. He has delivered solutions in both the public and private sector on the effective mitigation of business, compliance, and litigation risk to Law Firms; General Counsel; Boards of Directors; Audit Committees; and Chief Financial, Compliance, and Operations executives.
Johnny received his Juris Doctorate from the Georgia State University College of Law and his Bachelor’s degree from Emory University. He was admitted to the State Bar of Georgia in 2000, where he maintains an active law license. He has delivered projects across a variety of industries, including advanced technology, software, communications, private equity / venture capital, healthcare, hospitality, manufacturing, financial services, insurance, retail, construction, transportation, and legal.
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