On September 27, 2011, Chief Judge Randall R. Rader of the United States Court of Appeals for the Federal Circuit introduced a Model Order on E-Discovery in Patent Cases at the Eastern District of Texas Judicial Conference. While the proposed Model Order does not carry the weight of law, it does represent a positive trend in limiting the scope of overbroad and burdensome electronic discovery requests. In his speech introducing the Order, Judge Rader stated that cost is the "greatest weakness of the U.S. court system" and discovery excesses are a driving factor.[i] He recognized patent cases, in particular, tend to suffer from "disproportionally high discovery expenses."[ii] To address this problem, the Advisory Council of the Federal Circuit drafted and adopted the Model Order to guide district court judges and magistrates toward limiting electronic discovery in patent cases.
Similar to the Federal Rule of Civil Procedure (FRCP) 30, which limits the number of depositions a party can take during litigation, the Model Order proposes to presumptively limit the scope of electronic document requests and streamline production. For example, it limits the number of custodians and search terms for e-mail document requests. The parties may modify the scope upon agreement, but they must do so at their own expense. The requesting party would pay for additional productions beyond the scope of the Order or as granted by the Court.
Specifically, the Model Order provides:
Exchange of core documentation: The parties begin by exchanging initial disclosures and documents concerning the patents at issue, the prior art, the accused instrumentalities and relevant finances.[iii]
E-mail: After the initial exchange of core documentation, the parties may request limited e-mail discovery focused on specific issues.
Each request shall name the custodian, search terms and date range. The parties must cooperate to identify the proper scope.
Each requesting party shall limit the scope to five (5) custodians per producing party and five (5) narrowly tailored search terms per custodian.
Cost-shifting: The parties can agree to expand the scope of custodians, but the requesting party pays at its own expense for this information. The Court may shift costs for disproportionate ESI requests pursuant to FRCP 26 or any dilatory discovery tactics. The Court will also consider a party's compliance with the Order and its efforts to cooperate and contain costs.
Metadata: The production shall not include metadata, except for the date and time a document was sent or received and the distribution list.
Privilege: The inadvertent production of attorney-client communication or work product protected ESI will not be a waiver in the pending case or any other proceeding following Federal Rule of Evidence (FRE) 502(d).
If adopted, the Order will serve as a starting point for parties in patent cases to exchange the most relevant information concerning the patents at issue in a proportional and cooperative manner, and could result in substantial cost savings.
[i] Chief Judge Randall R. Rader, United States Court of Appeals for the Federal Circuit, "The State of Patent Litigation," E.D. Texas Judicial Conference, at 7 (Sept. 27, 2011).
[iii] See E-Discovery Committee of the Advisory Council of the Federal Circuit, An E-Discovery Model Order, at 2 (explaining that the most relevant discovery in patent cases centers on the patents themselves, how they work, the prior art and related financials versus the mass e-mail searches and productions which often result in tangential and less relevant evidence).