Electronic Discovery Law

During his speech at the E.D. Texas Judicial Conference on Tuesday, Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit introduced the new Model Order Regarding E-Discovery in Patent Cases.  Per Chief Judge Rader, the goal of the model order is to “streamline e-discovery, particularly email production, and require litigants to focus on the proper purpose of discovery—the gathering of material information—rather than on unlimited fishing expeditions.”

The model order, which contains 14 specific provisions, addresses a myriad of topics including cost shifting, metadata, and the treatment of privileged information (e.g., inadvertent production does not result in waiver).  As indicated, however, the majority of the provisions address the discovery of email.  For example, the model order provides that “[g]eneral ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall not include email or other forms of electronic correspondence (collectively ‘email’)” and that “[t]o obtain email, parties must propound specific email production requests.”  Moreover, those requests “shall only be propounded for specific issues, rather than general discovery of a product or business.”  The model order further provides that email production “shall be phased to occur after the parties have exchanged initial disclosures and basic documentation about the patents, the prior art, the accused instrumentalities, and the relevant finances.”  Also within the model order is a limitation on the number of custodians per producing party from which email may be requested (5) and on the number of search terms “per custodian per party” (5), although the parties may jointly agree to modify those limits.

A copy of Chief Judge Rader’s comments at the Judicial Conference is available here.

A full copy of the [Model] Order Regarding E-Discovery in Patent Cases is available here.