Hundreds of search terms. Dozens of employees, considered key "custodians," producing thousands of emails on a multitude of topics. Requests for electronically stored information (ESI) driving case strategy. E-discovery costs amounting to tens or hundreds of thousands of dollars, in some cases exceeding the amount in controversy. Unfortunately, these factors are all too common in complex litigation.
The costs of e-discovery are often magnified in patent disputes because the broad scope of discovery involves an array of topics and employees from many corporate departments. The Federal Circuit, which has appellate jurisdiction over patent disputes, recently provided guidance on the efficient use of e-discovery through its Model Order Regarding E-Discovery In Patent Cases. Although directed specifically to patent litigation, the Model Order's reasoned approach can help contain e-discovery costs in any complex litigation.
The Order's key provisions include:
- Limiting Discovery of Email. Requests for email production should be issue-specific, should not be used as a means for general discovery relating to a product or business and are to include "cooperatively" negotiated custodians, search terms and time frames. Moreover, requests for voluminous emails must be delayed until the parties complete the exchange of their initial disclosures and the detailed technical disclosures required by the specialized patent rules governing discovery in many district courts.
- Quantitative Limitations on Scope of Electronic Searches. Electronic searching for relevant documents is presumptively limited to five search terms narrowly tailored to specific issues that are to be chosen after negotiation with opposing counsel. Further, the number of document custodians whose electronic data must be individually searched is initially limited to five employees.
- Limitations on Waiver of Privilege. The Model Order provides that inadvertent production of privileged documents in ESI productions will not waive the attorney-client privilege or work product protections.
- Cost Shifting. Disproportionate electronic discovery requests or dilatory discovery tactics should result in cost shifting, with the offending party to pay all reasonable costs of the additional discovery.
- Limitations on Production of Metadata. With certain exceptions (e.g., the date, time and distribution list for email), parties should not be required to include metadata absent a showing of good cause.
These provisions provide a helpful starting point to develop responsible, targeted use of e-discovery and "promote economic and judicial efficiency by streamlining e-discovery and requiring litigants to focus on the proper purpose of discovery—the gathering of material information—rather than permitting unlimited fishing expeditions."
The Model Order is already influencing e-discovery management. In DCG Systems, Inc. v. Checkpoint Technologies, LLC, Magistrate Judge Grewal of the Northern District of California adopted many of the Model Order's recommendations and noted that “only through experimentation of at least the modest sort urged by the [Federal Circuit] will courts and parties come to better understand what steps might be taken to address what has to date been a largely unchecked problem.”
Although the Model Order is intended for patent cases, its goals and directives are applicable to a wide range of litigation and regulatory actions. For example, it teaches that requests for email production should be appropriately phased with other forms of discovery and are to be propounded after other means have been used to gain basic information. This approach, which encourages parties to exhaust less burdensome methods prior to embarking on open-ended and expensive e-discovery, can be effectively adopted in other cases. For example, parties may conduct written and documentary discovery on important topics prior to demanding extensive productions of ESI. This way, parties gain basic information relevant to the case at a much lower cost.
Similarly, specific limits on document custodians and search terms, the protection of privilege from inadvertent waiver, and limitations on metadata production are easily applied to any form of litigation. Moreover, the express terms for cost-shifting provide incentive for the parties to cooperate during the e-discovery process and to discourage parties from unreasonably demanding overbroad e-discovery.
The Federal Circuit's quantitative limits on the parameters of e-discovery and the provisions that push the parties to behave reasonably during the e-discovery process provide a valuable framework to reduce e-discovery costs, which can be beneficially implemented in any complex matter.
 Advisory Council, United States Court of Appeals for the Federal Circuit, Model Order Regarding E-Discovery in Patent Cases (Sept. 27, 2011).
 Model Order, Introduction.
 DCG Systems, Inc. v. Checkpoint Technologies, LLC, Case No C-11-03792 PSG (N.D.Cal. Nov. 2, 2011).