Federal Rule of Civil Procedure 26(b)(1), which governs the scope of discovery, was amended on Dec. 1, 2015. The prior rule allowed a party to "obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense" and stated that "[r]elevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence." The amended rule alters the focus from strictly relevance to include proportionality - parties may "obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case."

The idea of proportionality in civil discovery itself is not new - the amended rule simply makes it explicit. As the Advisory Committee on Rules of Civil Procedure stated in its notes on the 2015 amendments for Rule 1: "Effective advocacy is consistent with - and indeed depends upon - cooperative and proportional use of procedure." The committee's 1983 amendment to Rule 26(b)(1) sought to "guard against redundant or disproportionate discovery by giving the court authority to reduce the amount of discovery that may be directed to matters that are otherwise proper subjects of inquiry." However, as the 2015 committee notes explain, further amendments in 1993 appeared to soften the "clear focus" on preventing overdiscovery. The 2015 amendment addresses that unintended result and "restores the proportionality factors to their original place in defining the scope of discovery." Now, parties and courts must consider "the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit."

But while the factors themselves are not new, what is new is their position as a threshold consideration, rather than a basis for "additional restrictions on the scope and extent of discovery." As Magistrate Judge Paul Grewal noted in a recent order denying a motion to compel: "Old Rule 26(b)(2)(C)(iii) was clear that a court could limit discovery when burden outweighed benefit, and old Rule 26(g)(1)(B)(iii) was clear that a lawyer was obligated to certify that discovery served was not unduly burdensome. New Rule 26(b)(1), implemented by the December 1, 2015 amendments, simply takes the factors explicit or implicit in these old requirements to fix the scope of all discovery demands in the first instance." Gilead Sciences Inc. v. Merck & Co. Inc., 13-04057 (N.D. Cal. Jan. 13, 2016). As parties and courts consider these factors in drafting and evaluating disclosure requirements and discovery requests over the coming months, we will learn whether Grewal's hope that parties' "mindsets" will change will come to pass.

One area in which parties' mindsets may gradually change is the document production requirements outlined in patent local rules. Where district courts have instituted patent local rules to govern the disclosure of infringement and invalidity contentions, disclosure of documents describing the accused products and prior art references is built into those local rules. Under Federal Rule of Civil Procedure 83, any local rules promulgated by district courts must be consistent with the Federal Rules of Civil Procedure. Therefore, parties must comply with the disclosure requirements with amended Rule 26(b)(1) in mind.

Several districts and courts already allow for proportionality in disclosure requirements. For example, the Northern District of California, the Southern District of California, and the Eastern District of Texas require parties accused of infringement to produce "[s]ource code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its Patent L.R. 3-1(c) chart." Parties asserting infringement must produce "[d]ocuments ... sufficient to evidence each discussion with, disclosure to, or other manner of providing to a third party, or sale of or offer to sell, the claimed invention prior to the date of application for the patent in suit" and "[a]ll documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified pursuant to P. R. 3-1(e), whichever is earlier."

District of Delaware Chief Judge Leonard Stark takes a similar approach in his Patent Procedures. Stark's procedures, introduced in 2014, require a party to "produce core technical documents related to the accused product(s), sufficient to show how the accused product(s) work(s), including but not limited to non-publicly available operation manuals, product literature, schematics, and specifications."

Other courts have adopted additional rules which eliminate the need for specific requests for production. For example, judges in the Eastern District of Texas employ docket control orders that require parties to "produce or permit the inspection of all documents, electronically stored information, and tangible things in the possession, custody, or control of the party that are relevant to the pleaded claims or defenses involved in this action, except to the extent these disclosures are affected by the time limits set forth in the Patent Rules for the Eastern District of Texas." While this approach does avoid time-consuming conference calls spent discussing specific document requests, it can still result in a time-consuming letter writing campaign, followed by motion practice in cases where an aggressive opponent, with few documents of their own to produce, sees little downside in pressing for more and more discovery.

Parties may object to the relatively short deadlines for some of these patent local rule requirements, particularly in the Northern District of Illinois where production of documents "sufficient to show the operation and construction" of the accused products must take place within 14 days of filing an answer to the complaint. But those deadlines are certainly in line with Federal Rule of Civil Procedure 1 and its call for the "just, speedy and inexpensive determination of every action and proceeding." However, the language of the "sufficient to show" disclosure requirements in patent local rules provided parties with some flexibility in determining what, and how much, information was sufficient to fulfill their obligation under the local rules before the amendment of Rule 26(b)(1).

What the factors in the amended rule do provide is solid ground for parties to stand on when evaluating their disclosure requirements and when responding to aggressive opponents attempting to drive up costs through burdensome discovery demands. The "amount in controversy" and "the parties' resources" factors are especially useful for smaller companies with low revenues. Large companies with significant volumes of potentially relevant information, not to mention legacy systems and long-departed "most knowledgeable" employees, can focus on "the importance of the discovery in resolving the issues" and "whether the burden or expense of the proposed discovery outweighs its likely benefit." In either case, while parties cannot use the factors as an excuse to avoid production of relevant documents and information, the factors can be employed to defend against burdensome demands.

Whether the amended rule results in any changes to the language in patent local rules, or in the docket control orders used in the Eastern District of Texas remains to be seen. In the meantime, parties would be wise to address the Rule 26(b)(1) factors in their Rule 26(f) conference and engage in a good faith discussion regarding the scope of discovery. As discovery continues, parties can use the factors to prevent overdiscovery and ensure the just and speedy determination of the proceeding.

Originally published in the Daily Journal on March 9, 2016.