Moving to stem the rising costs of electronic discovery, the U.S. Court of Appeals for the Federal Circuit recently adopted a Model Order that sets out concrete discovery requirements designed to limit the scope of eDiscovery in patent cases.

Federal Circuit Chief Judge Randall Rader, in a September speech at the joint conference of the Federal Circuit and Eastern District of Texas, said the Model Order will serve as an aid to district courts to enforce responsible, targeted use of eDiscovery.

The Model Order was drafted by a special committee of the Advisory Council for the Federal Circuit and was designed to mimic the efficiency of Federal Rule of Civil Procedure 30, limiting the number of depositions that may be taken by each party. It contains specific provisions designed to curtail overbroad, time-consuming and costly eDiscovery requests by setting forth a process by which parties should exchange documents, including electronically stored information, or ESI.

Under the Model Order, parties are required to exchange “core documentation” before undertaking the process of requesting and producing email. This core documentation includes information concerning the patent, the accused infringing product, the prior art and finances. Once that exchange has been made, the parties may request email, but those requests should be focused on a particular issue for which discovery is warranted. The following provisions are also included:

  • There will be cost shifting for “disproportionate” ESI production requests.
  • General ESI production requests under Federal Rules of Civil Procedure 34 and 45 will not include metadata without a showing of good cause.
  • General ESI production requests under Rule 34 and Rule 45 of the Federal Rules of Civil Procedure will not include e-mail; to obtain e-mail, parties must propound e-mail production requests that are tailored for a specific issue or issues.
  • E-mail production requests must identify the custodian, search terms and time frame, as identified by the parties in cooperation.
  • The default rule is that each requesting party may identify only five custodians in its e-mail production requests, but the rule may be modified without consent of the court by joint agreement of the parties.
  • Inadvertent production of documents subject to a privilege or the work product doctrine does not constitute a waiver in that case or in any other proceeding.

These provisions are intended to reduce the costs for collection, processing, review, and production of ESI. In its introductory comments to the Order, the eDiscovery Committee also noted that these discovery limitations, in particular, the cost-shifting for disproportionate requests “will help ensure that discovery requests are being made with a true eye on the balance between the value of the discovery and its cost.”

This Model Order for patent cases recently received buy-in from the Northern District of California, a court with a heavy docket of patent cases. In a November 2, 2011, order in DCG v. Checkpoint Technologies, U.S. Magistrate Judge Paul Grewal of the Northern District of California granted a defense request to adopt a slightly modified version of the Model Order to govern discovery in that case.

In a joint discovery plan, Checkpoint Technologies proposed that electronic discovery be governed by the Model Order, with certain modifications, such as the production of metadata and allowance of 10 custodians from which to cull e-mail, rather than the Model Order’s limit of five. Plaintiff DCG objected, arguing that the Federal Rules of Civil Procedure adequately addressed such discovery issues, and that the Model Order was designed to address cases involving non-practicing entities, or so-called “patent trolls,” rather than disputes between actual competing businesses.

Judge Grewal sided with the defense, saying he found nothing in the text of the Model Order that limited its scope to cases involving patent trolls, nor any reason that competitor cases present less compelling circumstances for imposing restrictions on the timing and scope of e-mail discovery.

At least one other district court appears poised to follow in Judge Grewal’s footsteps. Judge Joy Flowers Conti of the Western District of Pennsylvania commented this month at the Georgetown Law Center’s Advanced eDiscovery Institute that her court is considering implementation of the Model Order in the near future.

Implementation of the Model Order could be profoundly beneficial for both plaintiffs and defendants in patent infringement actions. For example, the costs of gathering and producing e-mail will plummet, while parties will no longer be subjected to a mountain of irrelevant documents. Ballard Spahr attorneys will monitor these developments as courts across the country both consider whether to adopt their own versions of the Model Order, and develop case law addressing compliance with such orders.