On September 27, 2011, Chief Judge Randall R. Rader delivered a speech to a joint meeting of the Federal Circuit Bar Association and the Eastern District of Texas Bar Association. (See http://www.fedcirbar.org/olc/pub/LVFC/cpages/homepage/homepage.jsp). In his address, the Chief Judge focused on a primary problem with the federal court system: the expense associated with litigating civil cases, including the cost of eDiscovery. He highlighted that: “[e] very person in this room understands that the greatest weakness of the US court system is its expense. And the driving factor for that expense is discovery excesses. Electronic recordkeeping in the modern age has multiplied the expense of looking behind every curtain. As we all understand, the modern electronic age has rendered old discovery processes obsolete or, at least inappropriate for the vast complexity and volume of large patent disputes. Patent cases, in particular, produce disproportionally high discovery expenses.”

Chief Judge Rader also noted: “In the electronic age, discovery procedures designed for the 19th and 20th centuries just do not work for complex patent litigation. For example, blanket stipulated orders requiring the production of all relevant documents leads to waste. Courts must control the cost and efficiency of electronic discovery.” He then introduced a proposed model rule generated by a subcommittee of the Advisory Council of the Federal Circuit designed to “streamline eDiscovery”, which focused particularly on e-mail production and would require litigants to focus on the proper purpose of discovery—the gathering of material information—rather than on unlimited fishing expeditions. The model order also includes the following components:

  • A process for parties to exchange core documentation concerning the patent, the accused product, the prior art, and the finances before seeking e-mail production.
  • Presumptive limits on the number of record custodians and the number of search terms for requests seeking the production of e-mail. In particular, each party seeking production of e-mails would presumptively be limited to 5 custodians per producing party and 5 search terms per custodian. However, the parties would be able to jointly agree to modify these limits or ask the court to modify them for good cause if a joint agreement proves elusive.
  • Any party seeking to exceed the discovery limits would do so at its own expense.
  • Production requests under Rules 34 and 45 shall not include metadata absent a showing of good cause. However, fields showing the date and time that the document was sent and received, as well as the complete distribution list, shall generally be included in the production.
  • Production requests under Rules 34 and 45 shall not include e-mail or other forms of electronic correspondence (collectively “e-mail”). To obtain e-mails parties would be required to propound specific requests requiring e-mail production. Such requests would be limited to targeting specific issues, rather than general discovery of a product or business. These requests would be phased to occur after the parties have exchanged initial disclosures and basic documentation about the patents, the prior art, the accused instrumentalities, and the relevant finances. Note: While this provision does not require the production of such information, the Court encourages prompt and early production of this information to promote efficient and economical streamlining of the case. In addition, e-mail production requests shall identify the custodian, search terms, and time frame. The parties shall cooperate to identify the proper custodians, search terms and timeframe.
  • The receiving party would not be able to use ESI that the producing party asserts is protected by the attorneyclient privilege or work product doctrine to challenge such privilege or protection.
  • In addition, pursuant to Federal Rule of Evidence 502(d), the inadvertent production of privileged or work product protected ESI would not constitute a waiver in the pending case or in any other federal or state proceeding.

It remains to be seen how this model rule will be implemented in practice by the district courts and if it will gain any traction outside of the patent litigation context.