Chief Judge Randall R. Rader of the United States Court of Appeals for the Federal Circuit recently unveiled a new Model Order adopted by the Federal Circuit Advisory Council that seeks to streamline e-discovery in patent cases, particularly email production, and to require parties to focus on the gathering of material information, rather than on “unlimited fishing expeditions.”
The Model Order mandates a discovery process that requires the parties to first exchange key documents concerning the patent, the accused product, prior art, and finances. Only after parties make this exchange (and exchange initial disclosures) can either side request the production of email. Requests for the production of email must be focused on a particular issue of the case, not general discovery of a product or business.
The Model Order also presumptively limits the number of custodians and search terms for email production requests. Each requesting party must limit its requests for the production of email to a total of five custodians, and five search terms per custodian per party. The search terms must be narrowly tailored to particular issues. Blanket terms, like the producing company’s name or product name, are inappropriate unless they are combined with additional search criteria that amply reduce the risk of overproduction.
The parties can of course jointly agree to modify the limits on custodians and search terms without leave of court.
However, if no such agreement is met, a court must consider contested requests for up to five additional custodians or five additional search terms per custodian, provided that the requesting party shows a distinct need for the additional discovery based on the size, complexity, and issues of the case. If a party serves requests for the production of emails beyond the limits agreed to by the parties or granted by the court, the requesting party must bear the costs of the additional discovery.
The Model Order also prohibits a party from requesting metadata as part of its general production requests, absent a showing of good cause. The production of documents under the Model Order nonetheless should include fields showing the date and time that the document was sent and received, and the complete distribution list for the document.
Finally, the Model Order provides certain protections for the pre-production review of documents. To minimize expensive pre-production review, the Model Order contains certain mandates that are meant to address clients’ and lawyers’ concerns regarding the waiver of attorney-client privilege and work-product protection:
- The receiving party must not use electronically stored information that the producing party asserts is attorney-client privileged or work-product protected to challenge the privilege or protection;
- The inadvertent production of privileged or work-product protected electronically stored information is not a waiver in the pending case or in any other federal or state proceeding; and
- The mere production of electronically stored information in litigation as part of a mass production is not itself a waiver for any purpose.
To have any real impact, the Model Order’s suggested changes to e-discovery will need to be implemented by the district courts. Parties involved in patent litigation, or companies or individuals considering filing suit, should therefore watch for new e-discovery rules in district courts in the near future that implement the Model Order’s suggestions (or variations thereof).