Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit has just unveiled a model order that would limit e-discovery in patent cases. The Federal Circuit Advisory Council unanimously voted Monday to adopt the proposed "Model Order on E-Discovery in Patent Cases."
I applaud Rader's message in his talk on "Thoughts on the Status and Direction of Patent Litigation in the United States”, Rader said “We need to equalize the playing field for plaintiffs and defendants, whether they are home grown or foreign, a solo garage inventor or a Fortune 100 Company. The landscape of patent litigation is changing, and likewise, we need to keep evaluating and adapting with it.”
The model order proposes several limits on the production of electronically stored information. Most importantly, it severely limits general, “boil the ocean” email requests allowing delays in email production until sufficient specificity is agreed upon and significantly limits the number of email custodians. It anticipates that Claw Back rules are further relaxed for patent litigation. Highlights:
• Excessive Metadata requests require "a showing of good cause."
• E-mail production requests must be for specific issues, "not general discovery of a product or business."
• E-mail production requests should be delayed until after disclosures about the patents, the accused uses of the invention, relevant financial information and the prior art — published information about the subject matter of the claimed invention, including issued patents.
• E-mail requests are limited to five so-called custodians per producing party and five search terms per custodian.
• Courts may consider up to five additional custodians per producing party and five additional search terms per custodian. Litigants who submit e-discovery requests to adversaries that exceed court orders and the parties' agreement must pay for the extra production.
• Receiving parties are barred from using e-discovery that the producing party asserts is attorney-client privileged or work product protected.
• The production of electronic information in a mass production, or the inadvertent release of privileged or work product protected electronic data, is not a waiver or permission to use it.
Perhaps the Judge has gone too far in specifying only 5 custodians and 5 additional search terms, but I THINK WE SHOULD ALL WELCOME THE INTENT AND FUTURE PROMISE of Patent litigation cost controls.
At GGO we manage e-discovery on a large number of IP and Patent cases each year, for a wide range of clients in consumer electronics, internet technologies, communications and life sciences. Early reaction from clients wholeheartedly affirms the direction of the Model Order; in fact, many already conduct matters in alignment with these principles. Adoption of the order will have an important influence on other jurisdictions, and on the way industries approach patent litigation risk management with respect to the current excessive costs attributable to discovery in patent matters.
Read the full Federal Circuit Proposed Model rule here: docs/The-State-of-Patent-Litigation-w-Ediscovery-Model-Order.pdf