In my most recent blog, we examined the “Model Order on E-Discovery in Patent Cases” that was unveiled September 27 at the Eastern District of Texas Judicial Conference. In the weeks since Judge Rader’s somewhat revolutionary proposal, the e-discovery world has been abuzz about its implications — whether certain provisions go too far and, most importantly, when and how courts will apply the Model Order.
Over the past several weeks, courts in the Eastern District of Texas and the Northern District of California have provided a preview of how the Model Order could play out.
Stambler v. Atmos Energy (Case No. 2:10-CV-594)
On September 29, just two days after Judge Rader’s speech, the Eastern District of Texas Court used the Model Order to resolve a pending discovery dispute in the matter of Stambler v. Atmos Energy (Case No. 2:10-CV-594). In Stambler, Judge Everingham faced competing proposals where, among other things, the plaintiff asserted that it was entitled to email production from 20 custodians using 20 search terms to cull the data. The defendant did not directly respond to the proposed limitations, instead suggesting that the email discovery should be delayed, and that the plaintiff should not dictate how the defendant identified and produced data. In resolving the dispute, Judge Everingham did not directly make use of the Model Order, but instead issued a short discovery order that:
- rejected defendant’s argument that email production should be delayed
- initially limited email collection to five custodians that would be culled using 10 search terms and
- provided that either party could move to expand the number of custodians or search terms upon a showing of good cause.
Effectively Illuminated Pathways v. Aston Martin Lagonda (Case No. 6:11-CV-34)
On October 20, Judge Love in the Eastern District of Texas issued a discovery order in Effectively Illuminated Pathways v. Aston Martin Lagonda (Case No. 6:11-CV-34) that invoked at least the spirit, if not the complete substance, of the Model Order. In Effectively Illuminated, the plaintiff had proposed limiting email discovery to five custodians, while defendants proposed delaying email production until the parties could determine whether email discovery was necessary. Following a phone conference, the parties jointly entered a proposed order that:
- delayed email discovery pending the initial production of each party and
- provided that, following the initial discovery, each party could request the email production of five custodians, with the searching to be done in “the most efficient way possible with fewest and most relevant search terms.”
Intravisual v. Fujitsu (Case No. 2:10-CV-090)
On October 21, Judge Folsom in the Eastern District of Texas issued in Intravisual v. Fujitsu (Case No. 2:10-CV-090). Critically, in this case, the parties jointly submitted a proposed order that essentially tracked the Model Order — and Judge Folsom entered the order as proposed.
DCG Systems Inc. v. Checkpoint Technologies LLC (Case No. C-11-03792)
Finally, on November 2, the Northern District of California got in on the action when Judge Grewal issued a discovery order in DCG Systems Inc. v. Checkpoint Technologies LLC (Case No. C-11-03792). In DCG, the defendant proposed a discovery order adopting the Model Order, while the plaintiff opposed adoption, arguing that the court rely on the limits imposed by FRCP 26 and 34 to generically establish the boundaries of email discovery.
While praising the parties for working diligently to “address many of the ESI issues that often plague” complex patent cases, Judge Grewal noted that the parties could not reach accommodation on the subject of the Model Order. The inability to do so was premised primarily on defendant’s position that the Model Order was most applicable to cases involving non-practicing entities, and should not be applicable in a case involving direct competitors. Judge Grewal rejected the defendant’s argument, and adopted the plaintiff’s proposed version of the Model Order, noting that:
Perhaps the restrictions of the Model Order will prove undue. In that case, the court is more than willing to entertain a request to modify the limits. But only through experimentation of at least the modest sort urged by the Chief Judge [Rader] will courts and parties come to better understand what steps may be taken to address what to date has been a largely unchecked problem.
So what can we take away from these initial tests of the Model Order? First, as I anticipated in my last blog entry, it is unlikely that the Model Order will be applied in a uniform fashion. Instead, courts likely will enter discovery orders with reasonable limitations jointly agreed to by the parties. Conversely, we also expect courts to use the Model Order in whole or in part to impose constraints on parties that are unable to reach agreement on reasonable discovery limitations.
Second (and perhaps obviously), if your opposing party is coming to the table with discovery limitations that are in line with the Model Order, the days of simply objecting to their proposal is long gone. Parties should immediately start considering the limitations of the Model Order when they are negotiating discovery plans with their adversaries. If you go in just saying no to limitations on discovery, you are likely going to find yourself operating under the Model Order or some close variation thereof. This likely will be the greatest effect of the Model Order, as parties will need to cooperate in developing reasonable discovery plans.
Finally, and perhaps most interestingly, it appears that the courts, like most practitioners and commentators, are still weighing the relative benefits of the Model Order. Based on the precedent to date, courts appear reluctant to impose hard-and-fast limitations on custodians and search terms unless the parties jointly agree to them. Judge Grewal’s commentary perhaps best articulates the apparent sentiment that courts are not completely sold on all of the provisions of the Order, but are going to give it a try until they see how the custodian and search-term limitations shake out.