iRecognizing e-discovery in patent litigations carries “staggering time and production costs that have a debilitating effect on litigation,” in September of 2011, the U.S. Court of Appeals for the Federal Circuit adopted the Model Order Limiting E-Discovery in Patent Cases (the “model order”)—which places limits on the number of custodians and search terms that can be used for electronically stored information (ESI) discovery—and invited district courts to use the model order as a starting point for “streamlining e-discovery, particularly email production.” Last month (Mar. 2012), the U.S. District Court for the Eastern District of Texas (E.D. Tex.) accepted the Federal Circuit’s invitation and adopted its own e-discovery order.
The E.D. Tex. order uses the Federal Circuit’s model order as its baseline, but contains several modifications which appear to be aimed at harmonizing the E.D. Tex. order with the district’s liberal, mandatory discovery policies, including modifications that broaden provisions regarding the identification and number of search terms and custodians. The E.D. Tex. order also explicitly exempts production of certain information, where the information does not exist in the normal course of business or is not generated for the litigation and sets forth a particular format for ESI discovery. Several of these modifications and additions are summarized in the table below:
|
Provision |
Federal Circuit Model Order |
Eastern District of Texas |
|
· modification of the order |
for good cause |
in the court’s discretion or by agreement of the parties |
|
· scope of e-mail requests |
limited to specific issues, rather than general discovery of a product or business |
provision stricken |
|
· number of identified custodians |
no number specified |
specific identification of 15 most significant e-mail custodians |
|
· identification of e-mail custodians, search terms and time frame |
parties shall cooperate to identify |
parties shall cooperate to identify and requesting party may propound up to five written discovery requests and take one deposition per producing party |
|
· timing of e-mail production |
after exchange of initial disclosures and basic documentation about the patents, the prior art, the accused instrumentalities and relevant finances |
after exchange of initial disclosures, listing of e-mail custodians, infringement contentions, invalidity contentions and preliminary information on damages |
|
· e-mail custodians |
e-mail production limited to five custodians |
e-mail production limited to eight custodians |
|
· e-mail search terms |
e-mail production limited to five search terms |
e-mail production limited to ten search terms |
|
· costs for additional requests for production |
requesting party bears costs for production from additional custodians |
provision stricken—E.D. Tex. comments state that the limits of eight custodians and ten search terms should operate as “hard limits” |
|
· cost shifting |
disproportionate ESI production requests or dilatory tactics shift costs |
provision stricken—E.D. Tex. comments state this provision is an unnecessary restatement of Fed. R. Civ. P. 26(c) |
|
· inadvertent disclosure of privileged ESI discovery |
shall not be used to challenge attorney-client privilege or work product protection |
provision stricken—E.D. Tex. comments states removal intended to avoid conflicts with Fed. R. Evid. 502, Fed. R. Civ. P. 26(b)(5)(B) and common protective order provisions |
|
· production format |
no corresponding provision |
TIFF format with load file, indicating unitization and location of TIFF files |
|
· text searchable documents |
no corresponding provision |
no obligation to produce text searchable documents unless the documents already exist in text searchable form or are made text searchable in the course of the litigation |
|
· native files |
no corresponding provision |
shall be produced upon reasonable request |
|
· backups |
no corresponding provision |
no need to restore any form of media upon which backup data is maintained |
|
· voicemail and mobile devices |
no corresponding provision |
voicemails, PDAs and mobile phones are deemed not reasonably accessible and need not be collected and preserved |
Ultimately, the E.D. Tex. order favors parties propounding ESI discovery (as compared to the Federal Circuit model order). Specifically, modifications such as increasing the number of custodians and search terms; explicitly including written discovery requests and a deposition to determine custodians, search terms and time frames; removing the provision requiring ESI requests not to be generally directed to a product or business; and removing the provision that inadvertent disclosure cannot be used to challenge the protection or privilege of that disclosure; among others, appear to favor the propounding party. On the other hand, the E.D. Tex. order endeavors to curtail imposing additional burdens on the producing party by limiting information produced to that which exists in the normal course of business. Moreover, the E.D. Tex. did not adopt the order as a local rule, but included it only as an appendix to the local rules which, as stated by the court, “allows maximum flexibility for both litigants and the court as attempts are made to tailor e-discovery planning to differing facts, case to case.” E.D. Tex. judges, and the agreeing parties, thus have some discretion to tailor the e-discovery order to the facts of a case, and early familiarity with the particular discovery landscape of a case can allow for requests for modifications, if needed.
