Ride the Lightning

New Model Order in Patent Cases Would Limit "Excessive" E-Discovery

October 5, 2011

On September 27th, Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit unveiled a model order that would limit e-discovery in patent cases. He said that the Federal Circuit Advisory Council had unanimously voted to adopt the order.

The model order contains the following provisions:

• Metadata is excluded from e-discovery production requests without "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.

This is quite a sea change. Not all the federal courts will embrace the model order, but Rader said he believed "it will be influential in the way people think about e-discovery," noting that "the greatest weakness of the U.S. Court system is its expense – and the driving factor for that expense is e-discovery."

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