On September 27, 2011, while delivering a speech at the 2011 Eastern District of Texas Bench and Bar Conference [pdf], Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit unveiled a Model Order Regarding E-Discovery in Patent Cases [pdf].  The Model Order, which was prepared by an E-Discovery Subcommittee of which Chief Judge Rader was a member, was unanimously adopted by the Federal Circuit Advisory Counsel.

During his speech, Chief Judge Rader noted that the costs of expansive e-Discovery requests generally outweigh the benefits of such requests in patent litigation and that the use of e-Discovery as a tactical weapon may cause federal litigation in the United States to become “an intolerably expensive way to protect innovation or prove freedom to operate.”  Chief Judge Rader went on to explain that the goal of the Model Order “is to streamline [e-Discovery], particularly email production, and require litigants to focus on the proper purpose of discovery – the gathering of material information – rather than on unlimited fishing expeditions.”

Some of the highlights of the Model Order include the following:

  • Before serving email related e-Discovery requests, the parties must exchange initial disclosures, core documentation concerning the patent, the accused product, the prior art and their finances.
  • General requests for electronically stored information (“ESI”) shall not include email production requests; rather, email production requests shall be propounded only for specific issues as separate email production requests. 
  • General requests for ESI shall not include metadata absent a showing of good cause. Fields showing the date and time that the document was sent and received, as well as the complete distribution list, however, shall generally be included in the production.
  • Akin to Federal Rule of Civil Procedure 30’s presumptive limitations of ten depositions and seven hours per deposition, under the Model Order the parties are limited to five custodians per producing party for all email production requests and five search terms per custodian per party with respect to email production requests. 
  • While the parties may choose to jointly modify the email limitations without leave of court, should a party serve email production requests for additional custodians and/or additional search terms that are beyond the limits agreed to by the parties or granted by the court, the requesting party shall bear all reasonable costs caused by such additional discovery.
  • Incorporating Federal Rule of Evidence 502(d), the Model Order explicitly provides that inadvertent production of privileged or work product ESI is not a waiver in the pending case or in any other federal or state proceeding.

As noted by the E-Discovery Subcommittee in its introduction to the Model Rule, “... district courts have inherent power to control their dockets to further ‘economy of time and effort for itself, for counsel and for litigants.’”  Landis v. North Am. Co., 299 U.S. 248, 254 (1936).  While not displacing the parties’ need to identify and preserve potentially relevant information, the Model Order provides district courts with a road map for e-Discovery efficiencies in patent litigation – a road map that they can choose to follow as they control their dockets in the furtherance of economy of time and effort for all involved.