Model order casts a net over patent e-discovery fishing expeditions

Federal Circuit's model order recommends significant new e-discovery limits in patent cases.

The Federal Circuit released a model order in September that recommends significant new limits on e-discovery in patent cases. A subcommittee of judges and lawyers headed by Chief Judge Randall Rader drafted the order, which was unanimously adopted by the Federal Circuit Advisory Council.

The limits aim to reduce the costs of discovery in intellectual property cases, which average 62 percent higher than non-IP cases, according to a 2010 report from the Federal Judicial Center, the research and education agency of the U.S. federal court system. This higher cost results from the volume of scientific and technical material and wide product time frames involved in most patent litigation. Courts that rush through patent cases also escalate costs, according to Patrick Oot, co-founder and general counsel of the non-profit Electronic Discovery Institute.

The model order also provides numerical limits that apply only to email requests, says Mayer Brown Partner Sharon Israel. Each party may request email retained by only five people, known as custodians, and five search terms per custodian.Courts may consider allowing five additional custodians per producing party and five additional search terms per custodian. Additional requests may also be allowed, if the requesting party bears some or all of the additional production expense. Litigants who submit e-discovery requests that exceed court orders and the parties’ agreement also may be ordered to pay for the extra production.

The order also creates a distinction between general ESI production requests and requests for email regarding metadata, which is data about data. The order limits metadata for general ESI production, absent a showing of good cause, to the distribution list for a document, as well as the date and time the document was sent or received. No such metadata limitations are set for email requests.

Michael Kozubek

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