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In a clear recognition of the ever-increasing costs of electronic discovery, particularly in intellectual property cases, Chief Judge Randall Rader of the United States Court of Appeals for the Federal Circuit announced the adoption of a model order limiting the scope of electronic discovery in patent cases. At the Eastern District of Texas Bench Bar Conference, Chief Judge Rader said that the Advisory Council of the Federal Circuit unanimously adopted the model order, which had been drafted by a subcommittee comprised of various judges and attorneys.1

Noting that it “should serve as a helpful starting point for district courts to enforce responsible, targeted use of e-discovery in patent cases,” Chief Judge Rader stated that the model order’s goal “is to streamline e-discovery, particularly email production, and [to] require litigants to focus on the proper purpose of discovery – the gathering of material information – rather than on unlimited fishing expeditions.” Indeed, Chief Judge Rader cautioned that litigation is in danger of “becoming an intolerably expensive way to protect innovation or prove freedom to operate.”

To that end, and in a reversal of the common practice of “gathering huge amounts of information at the front of a case and running broad key searches as the issues emerge,” the model order provides for the parties to first exchange core documentation concerning the patent, accused product, prior art and finances. Once that is completed, the parties may then serve specific requests for the production of email which identify the custodian, search terms and time frame.

General electronically stored information (“ESI”) production requests shall not include metadata, unless there is a showing of good cause. However, fields showing the date and time a document was sent and received, as well as the complete distribution list, should be included.

The model order also limits the scope of email production. It sets a default limit of five custodians for each party. Parties may agree upon a different limit without court approval. In addition, the court may consider adding up to five additional custodians per producing party upon a showing of a “distinct need,” which is based on the size, complexity and issues of the matter.

Interestingly, if a party serves email production requests for custodians in excess of those agreed upon or granted by the court, the requesting party must bear all reasonable costs caused by this additional discovery. Necessarily, this provision will favor the party that is willing or able to expend more funds in litigation and may undercut Chief Judge Rader’s stated goal of curbing excessive discovery expenses.

The model order makes similar provisions for the number of search terms per custodian per party. The default is five search terms, but this is subject to negotiation or court intervention. And again, if requests exceed agreed upon or judicially set limits, costs will be shifted to the requesting party. Moreover, the order encourages parties to use search criteria that will narrow the searches.

Last, in an acknowledgment of the risk of inadvertently producing material protected by the attorney client privilege or attorney work product doctrine in mass productions, the model order specifically states that the mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose and inadvertent production is not a waiver in any state or federal proceeding. This provision also seeks to lessen the need for expensive and time-consuming pre-production review, by prohibiting receiving parties from using produced documents to assert that privilege or work product protection has been waived.

As drafted, the model order can be modified for good cause or by agreement of the parties. It is not yet clear whether the district courts will adopt all or part of the guidelines set forth in the model order for patent cases or even whether courts will expand the application of the order beyond the patent context. At a minimum, however, the model order suggests that federal courts may be starting to take a harder look at the incredibly expansive and expensive scope of e-discovery.

For more information on this model order, or general e-discovery obligations, please contact a member of Buchanan Ingersoll & Rooney’s E-Discovery Team.

1 The e-discovery committee which drafted the model order included judges from three different district courts: Chief Judge James Ware of the Northern District of California, Judge Virginia Kendall of the Northern District of Illinois, and Magistrate Judge Chad Everingham of the Eastern District of Texas. Notably, each of those districts was among the fourteen districts selected this year by the Administrative Office of the United States Courts to participate in the Patent Pilot Program, a 10-year pilot project designed to enhance expertise in patent cases among U.S. district judges. The adoption of any part of the model order by these judges or their district courts may be the next step in the broader adoption of such rules for discovery.