At the Eastern District of Texas’ Annual Bench & Bar Conference, on September 27, 2011, Chief Judge Randall Rader of the Court of Appeals for the Federal Circuit announced the publication of a Model E-Discovery Order for patent cases, drafted by a subcommittee of the Advisory Council for the Federal Circuit. Chief Judge Rader expressed grave concern about the cost of discovery in the US court system generally, and in patent cases in particular. Citing a Federal Judicial Center study, Chief Judge Rader placed the cost of discovery in intellectual property cases at 62 percent higher than non-IP cases, all else being equal.

Goals

The principal goal of the Model Order is to reduce the tremendous burdens of e-discovery, with a particular focus on the burdens associated with email production. To that end, the Model Order separates an email request into its own category with its own limits on the number of custodians and search terms, which Chief Judge Rader compared to the limits on the number and length of depositions included in Fed. R. Civ. P. 30. Other provisions stem from an effort to reduce the costs associated with pre-production review by proposing to eliminate waiver for inadvertently produced privileged and work-product electronically stored information (ESI).

General Provisions1

The Model Order, which can be modified for good cause or by agreement of the parties, sets limits on e-discovery, particularly of email. The order does not propose these as absolute limits, but imposes cost-shifting for “disproportionate ESI production requests.” A party’s “meaningful compliance … and efforts to promote efficiency and reduce cost” or, conversely, “nonresponsive or dilatory discovery tactics,” would be factors in determining the appropriate degree, if any, of cost-shifting.

The Model Order creates a distinction between “[g]eneral ESI production requests” and requests for “email” (which includes other forms of electronic correspondence). The order limits metadata for general ESI production, absent a showing of good cause, to the distribution list for a document, as well as the date and time the document was sent or received. No such metadata limitations are expressed for email requests.2

Email requests are to be propounded only after the parties have exchanged “initial disclosures and basic documentation about the patents, the prior art, the accused instrumentalities [e.g., products, software, or services alleged to infringe], and the relevant finances.” The order does not impose the obligation to do so, but these categories of documents, with the exception of financial information, are often the subject of mandatory disclosures in the jurisdictions with local patent rules. These categories of documents, as reflected by an introductory statement to the Model Order, were apparently selected based on the opinion that they cover the “topics [that] are normally the most consequential in patent cases”: the scope of the patents, the operation of the accused instrumentalities, the prior art, and the calculation of damages.

Procedure for Email Requests

The Model Order provides additional rules that apply only to email requests. First, such requests are limited to specific issues, rather than general discovery about an area of a party’s business or an entire product line. Second, an email request must specify, and the parties must cooperate in identifying, the custodian, search terms, and time frame. Third, a party’s email requests are limited to five custodians, and to five search terms per custodian. This limit is changeable by the agreement of the parties or by a showing of a “distinct need based on the size, complexity, and issues of [the] specific case.” The requesting party bears the costs of requests beyond the limit.

The order further explains that the limits on search terms should be applied with an eye toward whether the terms expand or narrow the scope of the request. The order states that disjunctive combinations of terms (i.e., “or”) count as multiple terms, while conjunctive combinations (e.g., “and,” “but not,” “w/x,” or similar) will count as only one term. Particularly broad terms, such as a company or product name, must include some kind of narrowing search criteria to be considered appropriate.

Privilege

The Model Order makes an effort to reduce the need for expensive pre-production review by prohibiting receiving parties from using produced documents to challenge waiver of privilege or work product protection. Moreover, the order states that inadvertent production “is not a waiver in the pending case or in any other federal or state proceeding,” and that “mere production,” without regard to whether it is inadvertent, as part of a “mass production shall not itself constitute a waiver for any purpose.”

Best Practices

  • Consider tailoring the Model Order to the circumstances of your case.
  • Ensure that the details of any variation of the Model Order are negotiated by someone with e-discovery experience.
  • Consider modifying paragraph 5 of the order to specify, in detail, the information fields to be provided with each document or email message, since “fields showing the date and time that the document was sent and received, as well as the complete distribution list,” would be considered “metadata” under prevailing industry definitions.
  • Consider proposing the exchange of basic information about potential custodians, such as organization charts and directories, as an early part of the phased discovery suggested in paragraph 8.
  • Consider proposing that the inventors of any patent in suit be included as automatic custodians who do not count against any limit on custodians, subject to date limits to be agreed by the parties.
  • Consider modifying the order, particularly the procedure for requesting production of emails, with respect to third-party discovery under Fed. R. Civ. P. 45, depending on the circumstances in your case.
  • Consider negotiating the exchange of financial reports from each accused infringer’s accounting databases as part of the exchange of “relevant finances” in paragraph 8.
  • Consider modifying paragraphs 10 and 11 to account for the likely possibility that crafting search terms “narrowly tailored” to your case requires sophisticated search logic targeting different custodians for discrete issues.