e-Asing the Burdens of Patent e-Discovery or Not?

August 28, 2013, 03:05 PM

A prime factor in increased litigation costs and the source of countless disputes fordistrict court judges, e-discovery has added a complicated and expensive layer to patent litigation over the last decade. Slowly, due to the uber-expense and burden associated with this modern discovery, courts have begun to fashion limits and to conform the Federal Rules of Civil Procedure to the realities of e-discovery. Citing the disproportionately high discovery expenses associated with the discovery process and, in particular, e-discovery, almost two years ago, Chief Justice Randall Rader of the United States Court of Appeals for the Federal Circuit (the Appellate Court that hears the appeals of patent trials) announced a sweeping model order for e-discovery in patent cases. Rader (and the Courts Advisory Council[1]) indicated that the model order should serve as guide for district courts to discourage wasteful fishing expeditions and to enforce reasonable, targeted use of e-discovery in patent cases. That order seeks to rein in costs through a variety of limitations, including:

  • Exclusion of email from general production requests.
  • Phasing email production requests until after the parties have exchanged initial disclosures and basic patent documentation.
  • Propounding email production requests only for specific issues rather than general discovery.
  • Limiting email production requests to five custodians and five search terms per custodian.
  • Cost shifting for disproportionate ESI production requests.
  • Exclusion of metadata other than sent/received dates and distribution list.

The limitations derive from Rules 26 and 16 of the Federal Rules of Civil Procedure and seek to balance the need for discovery with the potential burdens of expensive e-discovery. Since that time, several federal courts (Texas, California) have adopted similar rules or reasoning to limit e-discovery. The Eastern District of Virginia has not adopted the order but has repeatedly instructed parties to be reasonable in their demands and use of the potentially expensive discovery tools. The recent momentum to limit e-discovery may come to an end, though, as the Federal Circuit posted the following curious statement on August 1, 2013: Model orders concerning e-discovery and limitations on claims and prior art were posted on the courts website. Those orders have now been removed since the court has not sponsored or endorsed the orders. In light of the courts determination, the advisory council should not be viewed as having sponsored or endorsed these orders on behalf of the court. (emphasis added). Whether and why this may herald a retreat from the model order is still unclear. Stay tuned as the controversial issue unfolds. Stephen E. Noona is the head of Kaufman & Canoles Trial Section and Co-chair of its Intellectual Property Law and Franchising Practice Group. He has been counsel in over ninety (90) patent cases in the Eastern District, is Fellow in the American College of Trial Lawyers and has appeared before the judges in all four Divisions of the Eastern District on patent and intellectual property matters.–Stephen E. Noona

[1] The Advisory Council for the United States Court of Appeals for the Federal Circuit was established pursuant to 28 U.S.C. 2077(b) to review, study, and make recommendations regarding the rules of practice and internal operating procedures of the court. In essence, the Courts own ombudsman committee on rules has proposed a rule that the Court does not endorse the irony is rich.