Federal Circuit Unveils Model Order That Limits E-Discovery in Patent Cases
By: TIMOTHY M. O’SHEA
November 2011
On September 27, 2011, the Chief Judge of the United States Court of Appeals for the Federal Circuit announced a new Model Order for e-discovery in patent cases. The Model Order was motivated by concerns over the excessive costs in the discovery process, particularly in patent litigation. To address this problem, the Advisory Council of the Federal Circuit created a subcommittee to draft a Model Order that would govern e-discovery in patent cases.
The Model Order is designed to streamline e-discovery with an emphasis on setting limits on the amount of email that can be obtained in discovery. Just as Rule 30 of the Federal Rules of Civil Procedure presumptively limits cases to 10 depositions, the Model Order presumptively limits the number of custodians and search terms for all email requests. The Model Order also addresses concerns regarding waiver of attorney-client privilege and work product protection to help minimize the costs of human pre-production review.
Significant provisions of the Model Order include:
- Email production requests shall not occur until after the parties exchange initial disclosures and core documentation about the issues involved in the patent case (i.e., the patents at issues, prior art, the accused products, and relevant financials).
- To obtain discovery of email, parties must specifically make email production requests (email requests will not be considered part of a general production request for electronically stored information).
- Email production requests must identify the custodian, search terms, and time frame. The search terms must be narrowly tailored to specific issues (i.e., it is not appropriate to simply use the business name or name of the products at issue unless combined with additional narrowing terms).
- Each party seeking email production will be limited to a total of five custodians and five search terms per custodian, unless the parties jointly agree to modify these limits or request court modification for good cause based on the complexities of the case.
- Cost shifting to the requesting party for disproportionate production requests for electronically stored information, including requests for additional custodians or search terms.
- The production of electronic information in a mass production, or the inadvertent release of electronically stored information that is privileged or constitutes work product, will not constitute a waiver or permission to use it. Receiving parties are also barred from using inadvertently produced material to challenge the privilege designation.
As Judge Rader appropriately put it, “the greatest weakness of the US court system is its expense.” And such expenses only “multiply exponentially when attorneys use discovery as a tactical weapon.” Too often, litigants are serving overbroad discovery requests or are seeking discovery about discovery, with the ultimate goal of inflicting as much financial pain as possible on the other party. This might explain the growing disappearance of jury trials in federal court.
It remains to be seen if district courts will implement the Model Order in patent cases, or if such an order will be adopted in other types of civil litigation. At a minimum, however, the Model Order provides a valuable starting point for addressing the high costs of e-discovery.
A copy of the Model Order by the Federal Circuit Advisory Council E-Discovery Committee and a discussion of the Model Order, is available for your reference by clicking here.