On December 1, 2015, revisions to the Federal Rules of Civil Procedure took effect and will have a direct impact on the way that all cases, including patent and other IP cases, are litigated in federal courts. On April 29, 2015, the Supreme Court adoptedthe amendments and stated that the amendments shall govern all civil case proceedings commenced after December 1, 2015, and “insofar as just and practicable, all proceedings then pending.”1 Thus, the new rules will not only apply to new cases filed after December 1, but also to previously-filed cases upon request.
The most significant changes will impact discovery. Generally speaking, the scope of information that may be obtained in discovery under the new rules is less expansive than the previously-allowed information that “appears reasonably calculated to lead to the discovery of admissible evidence.”2 The new rules have tightened the scope of discoverable information to any nonprivileged, relevant matter that is “proportional to the needs of the case, considering 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.”3
The Advisory Committee’s Notes on the 2015 Amendment explain that these changes consider the realities of discovery costs on the parties, especially costs that are “exacerbated by the advent of e-discovery.”4 The Committee further acknowledges that the information possessed by the parties on the relative burden and proportionality of discovery will differ and that these issues should be addressed during the parties’ 26(f) conference. For larger defendants litigating against a smaller plaintiff, such as a non-practicing entity, the Advisory Committee acknowledges that the burden of responding to discovery requests is larger due to the greater amount of information in possession of the larger party. However, this burden should not prevent a larger defendant from explaining to the court the reasons why certain kinds of discovery may be too expensive or onerous to disclose, relative to the importance of a plaintiff’s claims. The larger party may simply be the only party that can fully describe the costs associated with a smaller plaintiff’s request.5
Although the revisions to Rule 26 remove the specific language describing permissible discovery, e.g.,“including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter”,6 the Advisory Committee indicates that this should not change the way that requests are propounded. Discovery of these topics, the Committee notes, “is so deeply entrenched in practice” that they do not require mention and that the topics should be open to other kinds of information.7 Specifically, the Committee notes that requests for ESI “may require detailed information about another party’s information systems and other information resources.”8 This may include, for example, a party’s typical data storage practices and services employed to back up and share electronic documents, e-mails, or instant messages.
The new Rules further provide an expedited schedule in the early stages of a case, such as requiring a court to issue a scheduling order within 60 days of a defendant being served, instead of the previous 90-day deadline.9 Discovery may also be expedited with “Early Rule 34 Requests”10 that allow service of document requests just 21 days after the summons and complaint are served, even before a Rule 26(f) conference has been scheduled. The logic behind this provision is that a Rule 26(f) conference may be more productive if the parties better understand the scope and types of documents that will be sought in a case. Responses to an early Rule 34 request can be served 30 days after the Rule 26(f) conference date, since the date of the conference is the date that the early Rule 34 request is deemed served.11
The scheduling order itself may cover more topics than the previous Rules suggested, in order to provide a more efficient way to resolve disputes without a formal motion. The Rules again expand ESI topics in the scheduling order to the preservation of ESI in addition to disclosure and discovery.12 Further, parties are permitted to include agreements on the effect of disclosing attorney-client privileged or work product communications under Federal Rule of Evidence 502.13 Finally, for a movant wishing to compel discovery or request a protective order, the scheduling order may direct the movant to request a conference with the court before moving for the order.14
Other revisions to the Rules further clarify the manner of responding to discovery requests and remedies for failing to produce. Objections to requests must now affirmatively state “whether any responsive materials are being withheld on the basis of that objection.”15 Although a producing party does not need to provide a detailed log of withheld documents, the Advisory Committee states that the affirmation of a party’s withholding should “end the confusion that frequently arises when a producing party states several objections and still produces information.”16 As a practical matter, this may have a significant impact on common litigation practice under the old Rules, under which parties would regularly lodge broad objections to document requests at the outset and concurrently or thereafter conduct a search to identify responsive documents (a process that often takes far longer than the 30-day period for service of objections under Rule 34). With the revisions, the Rules now require the parties to note which specific objections are related to withholding discovery. For electronically stored information (ESI), a responding party may state that documents will be produced instead of permitting inspection, but responsive ESI “must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.”17
Failure to preserve ESI may now warrant sanctions imposed by a court or other remedial measures. If lost, ESI “should have been preserved in the anticipation or conduct of litigation” and a party “failed to take reasonable steps to preserve it” the court may order “measures no greater than necessary” upon finding that the loss of ESI prejudiced another party.18 The prescription of these measures is intentionally broad and meant to enlist the court’s discretion. If a party acted with malicious intent to remove the ESI, three other remedies may occur: i) the lost information may be presumed unfavorable to the party ii) the court may instruct the jury to presume that the information was unfavorable or iii) in a worst case, dismiss the action or enter a default judgment.19 However, the listing of these remedies is not a talisman and lesser measures may be more appropriate if “the information lost was relatively unimportant.”20
The amendments to the Federal Rules of Civil Procedure largely emphasize the growing importance and necessity of ESI, and the desire to decrease litigation delays, especially at the start of a case. While the scope of discovery described in Rule 26 appears to be more narrow than the previous Rules, parties will nevertheless need a jumpstart on case strategy and document collection efforts in order to avoid sanctions and comply with an expedited schedule.