Parties in patent litigation are often subjected to extraordinarily high costs and burdens associated with electronic discovery. In an attempt to alleviate these burdens, the Federal Circuit Advisory Council adopted a Model Order Regarding E-Discovery in Patent Cases in September 2011, including guidelines for district courts. According to Chief Judge Rader, the goal of the model order is to “promote economic and judicial efficiency by streamlining e-discovery, particularly email production, and requiring litigants to focus on the proper purpose of discovery—the gathering of material information—rather than permitting unlimited fishing expeditions.”1 District courts responded in 2012 by introducing their own model orders, applying guidelines from the Federal Circuit’s Model Order in recent cases, and trying out new e-discovery strategies. Near the close of 2012, the International Trade Commission similarly issued e-discovery rules in patent proceedings, basing these on the rules adopted by district courts. The result is a changed e-discovery landscape for patent cases in 2013.
District Court Responses to the Federal Circuit’s Model Order
Eastern District of Texas
The Eastern District of Texas, one of the nation’s busiest patent litigation venues, adopted its Model Order Regarding E-Discovery in Patent Cases on February 27, 2012. Using the Federal Circuit’s Model Order as a baseline, a working group of the Local Rules Advisory Committee made a number of changes to the order based on its members’ experience with patent litigation in the district. Since the adoption of the Model Order, there have been more than 100 cases in the district that have applied it. See, e.g., Order Regarding E-Discovery in Patent Cases, MacroSolve, Inc. v. Antenna Software, Inc., No. 6:11-cv-00287 (E.D. Tex. Sep. 7, 2012); Order Regarding E-Discovery in Patent Cases, TQP Dev., LLC v. Dish Network, L.L.C., No. 2:12-cv-00179 (E.D. Tex. Aug. 9, 2012).
Northern District of California
Although the Northern District of California has not officially adopted its own e-discovery model order, the court has utilized certain aspects of the Federal Circuit’s Model Order in a number of cases. See, e.g., Case Management Scheduling Order, Vasudevan Software, Inc. v. Tibco Software, Inc., No. 11-cv-06638 (N.D. Cal. April 27, 2012) (adopting the Federal Circuit’s Model Order with two modifications); Order Granting-in-Part Plaintiff Software Rights Archive, LLC’s Motion to Compel Production of Documents from Non-Party Kleiner Perkins, In re Google Litigation, No. 08-cv-03172 (N.D. Cal. Dec. 7, 2011) (applying principles of the Federal Circuit’s Model Order to e-discovery from non-parties); Order Regarding E-Discovery, DCG Sys. Inc. v. Checkpoint Techs., LLC, No. 11-cv-03792 (N.D. Cal. Nov. 2, 2011) (adopting the Federal Circuit’s Model Order with several modifications). Magistrate Judge Paul S. Grewal has stressed that “only through experimentation of at least the modest sort urged by the Chief Judge will courts and parties come to better understand what steps might be taken to address what has to date been a largely unchecked problem.” DCG Sys. Inc. v. Checkpoint Tech, LLC, 2011 WL 5244356 at *2.
Limiting the Scope of E-Discovery
One way in which courts seek to manage the e-discovery issues inherent in patent cases is to limit the scope of e-discovery. This is accomplished by refining the scope of data sources included in ESI production requests and by imposing quantitative limits on the number of custodians and search terms in e-mail discovery requests.
Refining the Scope of Data Sources
According to Federal Rule of Civil Procedure 26(b)(2)(B), parties are not required to produce ESI from sources that are “not reasonably accessible.” The model orders, default standard, and e-discovery program discussed above set out to clarify exactly which sources are not reasonably accessible in patent cases. The Federal Circuit and Eastern District of Texas Model Orders exclude e-mail from general ESI production requests and require that all e-mail production requests be specific. The Eastern District of Texas Model Order goes further by excluding e-mail from compliance with mandatory disclosures required by the court and requiring that e-mail production requests be propounded only after the parties have made infringement and invalidity contentions. The Eastern District of Texas Model Order also states that, absent a showing of good cause, voicemails, PDAs and mobile phones are not reasonably accessible.
Imposing Quantitative Limits on Email Discovery
Number of Custodians
Another technique used by courts to curb the high costs of e-discovery in patent cases is to limit the number of custodians that a requesting party can list in its email production requests. These presumptive limits give some certainty as to costs because forensic searching and processing is usually charged on a per-custodian basis.
The Federal Circuit’s Model Order limits each requesting party to a total of five custodians per producing party for all e-mail production requests. The Model Order allows the parties to jointly agree to modify this limit without the court’s leave. Further, the court will consider contested requests for up to five additional custodians per producing party after a showing of a distinct need based on the issues, size, and complexity of the case. In the event that a party serves e-mail production requests for additional custodians beyond the agreed upon or court-granted limits, the requesting party must bear all reasonable costs caused by the additional discovery.
In two of its cases, the Northern District of California amended the Federal Circuit’s Model Order to allow the parties a total of ten custodians per producing party. Case Management Scheduling Order at 1, Vasudevan Software, No. 11-cv-06638; Order Regarding E-Discovery at 2, DCG Sys. No. 11-cv-03792. The court in these cases applied the modification requirements from the Federal Circuit’s Model Order, allowing the parties to agree to modify the limit and considering contested requests for up to five additional custodians per producing party. Case Management Scheduling Order at 1, Vasudevan Software, No. 11-cv-06638; Order Regarding E-Discovery at 2, DCG Sys. No. 11-cv-03792.
The Eastern District of Texas’s Model Order limits each requesting party to a total of eight custodians per producing party for all e-mail production requests. The parties may agree to modify this limit without taking leave of court, and the court will consider contested requests for additional or fewer custodians, upon a showing of a distinct need based on the complexity, size, and issues of a specific case. The Eastern District of Texas did not include the cost-shifting measures from the Federal Circuit’s Model Order. According to Chief Judge Leonard Davis, “this change gives the court tighter control over e-mail discovery by imposing a hard limit on the number of requests irrespective of the requesting party’s willingness [to] bear the associated costs.” Model Order Comments, No. 8.
Number of Search Terms
Another limit that courts impose on e-mail production requests is a limit on the number of search terms that a party can request. In its Model Order, the Federal Circuit limits each requesting party to five search terms per custodian per party. As with the limit on the number of custodians, the parties may agree to modify the limit without the court’s leave, and the court will consider contested requests for up to five additional search terms upon the showing of a distinct need. The Model Order requires that the search terms be narrowly tailored to particular issues and encourages the use of narrowing search criteria. Once again, the Model Order imposes all reasonable costs upon any party that serves e-mail production requests with search terms that exceed the limit agreed to by the parties or granted by the court.
The Northern District of California has been fairly liberal in setting its search term limits. In Vasudevan Software, the court limited each party to twenty-five search terms per custodian per party. Case Management Scheduling Order at 1, No. 11-cv-06638. In DCG Systems, the limit for each party’s initial email production requests was set at twenty search terms per custodian per party, and all additional email production requests were limited to five search terms per custodian per party. Order Regarding E-Discovery at 2, No. 11-cv-03792. As in the Federal Circuit’s Model Order, the parties in Vasudevan Software and DCG Systems could agree to modify the limits and the court would consider contested requests for up to five additional search terms. Case Management Scheduling Order at 1, Vasudevan Software, No. 11-cv-06638; Order Regarding E-Discovery at 2, DCG Sys. No. 11-cv-03792.
The Eastern District of Texas’s Model Order limits each party’s email production requests to a total of ten search terms per custodian per party. The parties may jointly agree to modify this limit, and the court shall consider contested requests for additional or fewer search terms per custodian upon a showing of distinct need. Each party is required to narrowly tailor its search terms to particular issues, and the order encourages the use of narrowing search criteria. Again, the Eastern District of Texas eliminates the cost-shifting measures from the Federal Circuit’s Model Order.
Best Practices to Avoid Compliance Pitfalls
Provide Required Notice to Third Parties
One potential pitfall that may accompany compliance with the new e-discovery rules is the failure to provide notice to third parties regarding the production of documents. Often, third-party agreements and patent licenses contain a confidentiality provision that requires a party to the agreement to provide notice to the other party or parties before producing the agreement in any legal matter. Additionally, the production of source code often requires providing notice to the provider of the website or software that contains that code. When dealing with e-discovery, it can be easy to fall into the trap of simply producing large batches of documents at once without stopping to consider whether notice is required. In their haste to comply with the e-discovery rules, law firms and their clients may fail to provide this notice. To avoid this pitfall, law firms should be particularly vigilant in identifying categories of documents that may be subject to notice requirements.
Send Both Retention and Release Notices
Document retention notices are useful tools for identifying relevant documents and complying with e-discovery requirements. Often these notices suspend ordinary document destruction practices. Retention notices are frequently one of the first steps taken at the inception of litigation and thus are rarely omitted. Their corollary notices however, namely release notices at the end of litigation, are often overlooked. Release notices allow custodians to resume ordinary document destruction practices. Without releases, information preserved pursuant to a retention notice is kept indefinitely. Such preservation undermines any ordinary document destruction practices to which the custodians may otherwise adhere. To avoid this pitfall, attorneys should create a standard practice of sending releases notices upon the final resolution of litigation.
Electronic discovery in patent litigation has historically been a time-consuming and costly task. The Federal Circuit’s Model Order and the various District Court responses introducing e-discovery rules and procedures in 2012 have changed the way e-discovery is conducted in patent cases. The coming year will tell whether these new developments will take hold in other jurisdictions and ultimately be effective in mitigating the hardships that accompany the e-discovery process in patent litigation.
1 E-Discovery Committee, An E-Discovery Model Order (2011), 7 Annotated Patent Digest § 41:46.50 (Feb., 2012), available at http://www.patentlyo.com/files/ediscovery-model-order.pdf.
Stephanie Chu is an associate in the firm’s Intellectual Property Litigation Group. Her practice includes all areas of intellectual property litigation and counseling, with a particular emphasis on patent litigation and enforcement.
Lindsey Yeargin is an associate in the firm’s Intellectual Property Litigation Group. Yeargin received her J.D. from the University of Virginia School of Law.
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Kamran Jivani is a senior associate in Alston & Bird’s Intellecutal Property Litigation group where he focuses on complex patent litigation between direct industry competitors, channel partners, or against non-practicing entities in a variety of industries including web-enabled services, computer software, datbase systems and telecommunications.