Posted on: 10/3/2011
Steven M. Puiszis
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The Chief Judge of the United States Court of Appeals for the Federal Circuit recently announced an innovative model order for ediscovery in patent cases. The model order sets presumptive limits on the amount of email that can be obtained in discovery, provides mandatory cost-shifting provisions for disproportionate discovery requests and contains automatic protection against inadvertent waiver of privilege or work product. While the tremors from the model order will not cause the world of ediscovery to spin off its axis, they should cause practitioners everywhere to sit up and take notice. The model ediscovery order for patent cases can be found here.
A speech by Chief Judge Randall Rader on the state of patent litigation in the United States served as the launching pad for the model ediscovery patent order. In that speech, Judge Rader candidly acknowledged that the “greatest weakness of the United States court system is its expense.” He noted that the primary factor driving that expense is the cost of discovery which multiplies “exponentially when attorneys use discovery as a tactical weapon.” Judge Rader cautioned that cost of excessive discovery “serves as an unhealthy tax on innovation and open competition,” and that our courts “are in danger already of becoming an intolerably expensive way to protect innovation or prove freedom to operate.”
To address this problem, the Advisory Council of the Federal Circuit created a subcommittee to draft a model rule governing ediscovery in patent cases. The Federal Circuit Advisory Council considered and unanimously adopted the subcommittee’s model ediscovery order. Judge Rader explained that the model order “should serve as a helpful starting point for district courts to enforce responsible, targeted use of e-discovery.”
Significant aspects of the model order include:
- Cost shifting for disproportionate ESI production requests.
- ESI discovery requests under Fed. R. Civ. P. 34 and 45 shall not include metadata absent a showing of good cause.
- General ESI discovery requests shall not include email or other forms of electronic correspondence, and to obtain discovery of email, parties must propound specific email production requests.
- Email discovery is phased and takes place only after the parties exchange initial disclosures and basic documentation about the issues involved.
- Email production requests must be targeted at specific issues, “rather than general discovery of a product or business.”
- Email production requests must identify the custodians from whom discovery is sought, specify search terms to be used and the time frame encompassed by the request.
- An email production request is limited to a total of five (5) custodians and five (5) search terms per custodian, per party, unless the parties jointly agree to modify that limit. When the parties are unable to agree on a larger number of custodians or search terms, the court is permitted to consider a request for up to five (5) additional custodians and five (5) additional search terms for each custodian, “upon showing a distinct need based on the size, complexity and specific issues of [a] specific case.”
- If a party’s email production request seeks information from additional custodians or includes additional key words beyond the number agreed to by the parties or specified by the court, the requesting party shall bear all reasonable costs caused by that additional discovery.
- The use of “indiscriminate” search terms is “inappropriate unless combined with narrowing search criteria that sufficiently reduces the risk of over production.”
- A disjunctive combination of multiple words or phrases (e.g., “computer” or “system”) are to be counted as separate search terms unless they are variants of the same word.
- Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged and shall be considered when determining whether to shift costs for disproportionate discovery.
- The receiving party is barred from using ESI that the producing party asserts is protected by attorney-client privilege or constitutes work product.
- Inadvertent production of ESI that is privileged or constitutes work product does not constitute a waiver in the pending case or in any other state or federal proceeding.
- Production of ESI as part of a “mass production” in a lawsuit shall not constitute a waiver for any purpose.
The model ediscovery order for patent cases is groundbreaking. Just as the federal discovery rules presumptively limit parties to ten depositions, the model order presumptively limits the number of custodians from whom email can be sought. Its cost-shifting provisions will require parties to carefully consider the discovery they seek. It should reduce discovery costs and limit the gamesmanship that occurs with ediscovery. Too frequently, we find parties serving overbroad discovery requests or engaging in discovery about discovery, where the ultimate end game is not getting to the merits of a lawsuit, but rather to obtain discovery sanctions or force a settlement to avoid the cost of ediscovery. The model order will help parties address the merits of a claim sooner and achieve a quicker, less costly resolution. Many have puzzled over why jury trials are disappearing in federal courts. A major contributor is the cost of discovery. Limiting excessive ediscovery costs can only help civil jury trials flourish in our federal court system.
All practitioners should familiarize themselves with the model ediscovery patent order. If this model order is sufficient for some of the most technically complex lawsuits pending in our federal court system, there is no reason why the principles underlying the order could not be applied to other types of litigation in federal or state courts where the amount in controversy is less than in a typical patent case. In federal cases where the stakes are much smaller, Rule 26’s proportionality principles theoretically should be applied with an even greater vigor than in a typical patent case.
Steve Puiszis is a partner with Hinshaw & Culbertson LLP. He is a member of DRI’s Board of Directors and serves as the Chair of DRI’s Judicial Task Force. Steve was the editor of DRI’s report on judicial independence issues, Without Fear or Favor in 2011.