Recognizing e-discovery in patent litigations carries “staggering time and production costs that have a debilitating effect on litigation,” in September of 2011, the U.S. Court of Appeals for the Federal Circuit adopted the Model Order Limiting E-Discovery in Patent Cases (the “model order”)—which places limits on the number of custodians and search terms that can be used for electronically stored information (ESI) discovery—and invited district courts to use the model order as a starting point for “streamlining e-discovery, particularly email production.” Last month (Mar. 2012), the U.S. District Court for the Eastern District of Texas (E.D. Tex.) accepted the Federal Circuit’s invitation and adopted its own e-discovery order.
The E.D. Tex. order uses the Federal Circuit’s model order as its baseline, but contains several modifications which appear to be aimed at harmonizing the E.D. Tex. order with the district’s liberal, mandatory discovery policies, including modifications that broaden provisions regarding the identification and number of search terms and custodians. The E.D. Tex. order also explicitly exempts production of certain information, where the information does not exist in the normal course of business or is not generated for the litigation and sets forth a particular format for ESI discovery. Several of these modifications and additions are summarized in the table available here.
Ultimately, the E.D. Tex. order favors parties propounding ESI discovery (as compared to the Federal Circuit model order). Specifically, modifications such as increasing the number of custodians and search terms; explicitly including written discovery requests and a deposition to determine custodians, search terms and time frames; removing the provision requiring ESI requests not to be generally directed to a product or business; and removing the provision that inadvertent disclosure cannot be used to challenge the protection or privilege of that disclosure; among others, appear to favor the propounding party. On the other hand, the E.D. Tex. order endeavors to curtail imposing additional burdens on the producing party by limiting information produced to that which exists in the normal course of business. Moreover, the E.D. Tex. did not adopt the order as a local rule, but included it only as an appendix to the local rules which, as stated by the court, “allows maximum flexibility for both litigants and the court as attempts are made to tailor e-discovery planning to differing facts, case to case.” E.D. Tex. judges, and the agreeing parties, thus have some discretion to tailor the e-discovery order to the facts of a case, and early familiarity with the particular discovery landscape of a case can allow for requests for modifications, if needed.