During a recent bench-bar conference in Texas, Federal Circuit Court of Appeals Chief Judge Randall Rader unveiled a set of proposed improvements to patent litigation, including a model order that would place limits on e-discovery. While the court has not yet adopted the order, it was endorsed by the Federal Circuit Advisory Council, which noted in comments accompanying the proposed order, “this Model Order requires a discovery process whereby the parties exchange core documentation concerning the patent, the accused product, the prior art, and the finances before making email production requests.”

Among other matters, the order would (i) exclude metadata from general electronically stored information (ESI) production requests; (ii) shift costs for disproportionate ESI production requests; (iii) limit e-mail production requests to specific issues only, “rather than general discovery of a product or business,” and require that such requests “identify the custodian, search terms, and time frame”; (iv) limit e-mail production requests “to a total of five custodians per producing party for all such requests,” unless modified by agreement or court order; (v) limit e-mail production requests “to a total of five search terms per party,” unless modified by agreement or court order; and (vi) protect inadvertently produced material by deeming attorney-client privilege or work product not waived in that instance.  

Judge Rader pointed to other practices that could help streamline patent litigation, including effective use of summary judgment to narrow issues for trial, careful venue selection, case management improvements, uniform district court procedures, and the imposition of fees and costs on non-practicing entities, or “trolls,” attempting to “enforce a patent far beyond its actual value or contribution to the prior art.”