By Kevin M. Repper
The use of e-discovery requests present a broad spectrum of challenges including preservation of attorney client privileges and work product, production format and the disproportionate costs included in massive searches and data collection. Particularly, patent cases have been a victim of noticeably higher expenses when dealing with e-discovery.
Patent cases generally require discovery of the accused products work, what the prior art discloses, and the proper calculation of damages. These topics tend to cause disproportionate, overbroad email production requests, having overwhelming time and production costs. Generally, such expansive production costs outweigh the substantive benefits of the requests.
Thus, the Model Order Limiting E-Discovery in Patent Cases was created. The order was intended to be a helpful starting point for district courts to use in requiring the responsible, targeted use of e-discovery in patent cases. The goal of the Model Order is to allow a more efficient discovery process, especially with the discovery of mass e-mails. Further, the Model Order promotes the gathering of material information as apposed to permitting an unlimited fishing expedition.
As mentioned above, one of the intended purposes of the Model Order was to give district courts a basic outline, in which the court could further add too as they saw fit. On March 2, 2012, the Eastern District of Texas unveiled its own model discovery order as an appendix to local rule amendments. The model discovery order is the work product of a group of the Eastern District’s Local Rules Advisory Committee after reviewing the Federal Circuit Model Order.
Some examples of the changes between the Eastern District of Texas’s model order and the Federal Circuits Model Order are summarized below:
- The Eastern District of Texas Model Order allows the modification of the Order in the Court’s discretion or by agreement of the parties instead of a showing of good cause as outlined in the Federal Circuits Model Order.
- The Eastern District of Texas Model Order strikes the provision in the Federal Circuit Model Order which states that the costs will be shifted for disproportionate Electronically Stored Information (ESI) production requests and a party’s nonresponsive or dilatory discovery tactics will be cost-shifting considerations.
- The Eastern District of Texas Model Order discloses that absent a showing of good cause, general ESI production requests under Federal Rules of Civil Procedure 34 and 45, or compliance with a mandatory disclosure requirement of this Court, shall not include metadata.
- The Eastern District of Texas added parameters to apply to the ESI production including the format of the documents and other basic requirements and omissions.
- The Eastern District of Texas outlined the method of requesting email production and changed the limit on custodians and search terms.
The district’s proposal includes a redline/strikeout comparison to the Federal Circuit model order and detailed commentary explaining the rationale for the deviations from the Federal Circuit model. The district’s proposed order makes some useful modifications to the Federal Circuit’s model e-discovery order, and it would not be surprising if there were further modifications in the future to tailor to other district’s needs.