Model Order on E-Discovery in Patent Cases
When Chief Judge Rader unveiled the Federal Circuit Advisory Panel’s “Model Order on E-Discovery in Patent Cases” last September at the Eastern District of Texas Bar Conference, many commentators — included yours truly — praised the underlying goal of the Model Order while wondering whether the limitations on email discovery were too restrictive in actual practice.
Electronic Discovery Industry Concerns
Specifically, the legal community questioned the Model Order’s presumption that email discovery should be limited to five custodians using five disjunctive search terms, as well as the “hard” limits on 10 custodians and 10 search terms absent separate agreement of the parties. The limited judicial decisions issued since Judge Rader introduced the Model Order, many of which emanated from the Eastern District of Texas, implicitly echo this concern, as they consistently have altered the Model Order’s limitations on custodians and search terms by providing the parties and the court with the ability to exceed limits on custodians and search terms based on a showing of good cause. The decisions also highlight the fact that the Model Order limitations are not applicable if the parties collaborate and agree upon discovery limitations that will govern an individual case.
New Developments: E-Discovery in Patent Cases
Against that backdrop, the Eastern District of Texas recently issued its own proposed Model Order Regarding e-Discovery in Patent Cases (“ED Tex Order”). The ED Tex Order formally embraces the Model Order by using it as a literal baseline; the text of the ED Tex Order is a redlined copy of the Model Order. Importantly, however, the ED Tex Order modifies several provisions related to the identification and volume of email custodians and search terms to ensure that the parties and court have both the information and ability to craft discovery parameters that are appropriate for each individual case:
|Federal Circuit||ED Tex|
|Identification of custodians possessing relevant information||Parties must exchange listing of likely email custodians||In addition to list of likely email custodians, expressly requires parties to disclose the 15 most significant email custodians in light of the claims and defenses at issue|
|Discovery surrounding identification of custodians and search terms||Not provided||Each party may propound five written discovery requests and conduct one deposition per producing party to identify appropriate custodians and search terms|
|Number of custodians subject to email discovery||Five, with parties retaining ability to jointly agree to modifications without leave of court||Eight, with parties retaining the ability to jointly agree to modifications without leave of court|
|Requests for additional custodians||Absent agreement of the parties, court will consider request for up to five additional custodians||Absent agreement of the parties, court will consider request for additional or fewer custodians|
|Ability of party to unilaterally request production from additional custodians||Allowed, provided that the requesting party pay all costs associated with the production||Specifically excluded from rule|
|Number of search terms to be applied to each custodian||Five, with the requirement that searches be disjunctive||10, with the requirement that searches be conjunctive|
|Requests for additional search terms||Absent agreement of the parties, court will consider request for up to five additional search terms||Absent agreement of the parties, court will consider request for additional or fewer custodians|
These modifications in large part address many of the concerns associated with the Model Order on e-discovery. Specifically, they provide an established discovery framework that requires that the parties exchange information to logically identify appropriate custodians and search terms while allowing the court to craft appropriate solutions based on the needs of a given case. As noted above, this may include crafting e-discovery plans that provide for fewer search terms or custodians than those contemplated by the Model Order. Moreover, the ED Tex Order appears to eliminate a party’s potential ability to fund and impose expansive discovery beyond the discovery approved by the court. Finally, separate and apart from the limitations identified above, the Model Order provides standard production formats by which the parties must abide if they cannot reach agreement.
It will be interesting to see how the ED Tex Order plays out in practice, and whether it results in meaningful and consistent email discovery limitations. It also bears watching whether the ED Tex Order serves as the first of multiple revisions to local patent rules in jurisdictions facing high volumes of patent litigations. Like the ED Tex Order, it is likely that subsequent local rules will not refute the Model Order, but instead retain its basic framework while arming individual judges with the tools to craft discovery plans appropriate the cases before them. We’ll all be waiting to see what happens next.