In a speech on September 27, 2011 to the Eastern District of Texas Bench Bar Conference, Chief Judge Randall R. Rader of the United States Court of Appeals for the Federal Circuit revealed a new Model Order for Patent E-Discovery. This Order is a real game-changer for patent litigants because of the almost-unprecedented strict limits on e-discovery. This Order also provides another excellent model for phased e-discovery and discovery limits that can be used effectively in other complex litigation.
The Order contains the following limits on e-discovery:
- No production of metadata absent a showing of good cause (except for the date and time and document was received and a distribution list).
- General production requests shall not include email or other electronic correspondence – email must be part of specific requests that “shall only be propounded for specific issues.”
- Email production occurs only after initial disclosure and basic documentation about the patents, prior art, accused instrumentalities, and relevant finances.
- Email requests can only be made for 5 custodians per party. A party can ask for an additional five custodians upon showing of need. But the party requesting the additional custodians must pay all reasonable costs for such additional discovery.
- Email production requests is limited to five search terms per custodian per party, although the parties may jointly modify this limit without leave of the Court.
- Inadvertent production of privileged information is not a waiver.
In recommending these limits, the Order states the committees’ concerns about discovery abuses being observed in patent cases:
“In recent years, the exponential growth of and reliance on electronic documents and communications has exacerbated such discovery abuses. Excessive e-discovery, including disproportionate, overbroad email production requests, carry staggering time and production costs that have a debilitating effect on litigation. Routine requests seeking all categories of Electronically Stored Information often result in mass productions of marginally relevant and cumulative documents. Generally, the production burden of these expansive request outweighs the minimal benefits of such broad disclosure.”
Complying with these rules will be challenging for lawyers who are not used to working with tight discovery limits. Counsel must become more creative and strategic when it comes to discovery, and make sure to work with their clients and appropriate experts to determine how best to accomplish their litigation goals through limited discovery.