Parties involved in complex litigation face increasing e-discovery costs in almost every case. These costs are particularly acute in patent actions, where the broad scope of discovery may subject parties to e-discovery costs and burdens that spiral out of control even more quickly than in other actions.
Recognizing the importance of reducing e-discovery costs in patent litigation, the Federal Circuit, which has jurisdiction over appeals in patent cases, issued a model e-discovery order in September 2011 to provide specific guidance on ways to limit the scope and cost of e-discovery in patent cases.
For example, the Federal Circuit Model would exclude email from general production requests for electronically stored information (ESI) and would require parties to serve requests specifically seeking the production of email. It would limit to five both the number of document custodians whose email must be searched and the number of terms that can be used in Boolean searches of a party’s electronic correspondence. If a party serves discovery requiring more than these limited allotments, it would bear all reasonable costs associated with such additional discovery.
The Eastern District of Texas, one of the nation’s most active patent litigation venues, recently followed the Federal Circuit’s lead with its own Model Order Regarding E-Discovery in Patent Cases, which was added as an appendix to the court’s local rules in February. The East Texas Model is largely based on the Federal Circuit’s model order, but includes several unique provisions derived from the drafting committee’s experience in the Eastern District’s active patent docket. The most visible of these changes permits a party to request email documents from a total of eight custodians, rather than five, and doubles the number of permissible search terms to 10.
Although the East Texas Model allows a greater number of custodians and search terms, it does not provide the immediate flexibility of the Federal Circuit Model’s approach to additional discovery or the cost-shifting provisions for obtaining discovery from additional custodians or for increasing the number of search terms.
The East Texas Model also includes novel provisions that will clearly assist the parties in determining the appropriate individuals to identify as custodians, to identify the appropriate search terms and to determine if the model order’s standard limits on discovery should be modified in a specific case. Specifically, the East Texas Model requires the parties to exchange the identities of the 15 most significant email custodians in light of the claims and defenses raised in the action and permits the parties to undertake targeted early discovery to inform their decisions regarding e-discovery.
Additionally, the East Texas Model provides two methods for obtaining discovery from additional custodians, involving more search terms, or that otherwise exceeds the model order’s limitations.
1. Since the order is intended as a model, parties in particularly complex matters are free to voluntarily expand the scope of discovery when creating the initial case management statement or at other appropriate times.
2. A party may move the court to permit discovery in excess or that permitted under the model order, and the court may modify the limitations under a discretionary standard. While this represents a lower standard to amend the discovery parameters than is provided in the Federal Circuit Model, which requires "good cause,” the requesting party must still engage in motion practice and obtain the court's leave to serve additional discovery.
The East Texas Model also includes a new section governing the format of ESI production that is based on provisions that have become customary in discovery plans filed in the Eastern District. These provisions require electronic documents be produced as TIFF images, govern when documents must be produced in searchable format, seek to limit e-discovery burdens by delineating the sources of data that must be preserved, and by excusing parties from the expense of restoring data on back-up media and from preserving and collecting data from voicemails, PDAs and mobile phones, absent a showing of good cause.
The East Texas Model, which is based on both the Federal Circuit model order and on a great deal of experience litigating complex patent cases in the Eastern District, provides important strategies for limiting the costs and burdens of e-discovery that can be applied to all complex cases.
In addition to limiting the number of document custodians and search terms, the East Texas Model emphasizes the savings that can be achieved by focusing on e-discovery parameters during the initial case management conference and by conducting targeted, preliminary discovery to specifically identify the appropriate parameters for e-discovery later in the case.
Taken together, the Federal Circuit and East Texas model orders will be valuable resources for the parties in all complex cases in which e-discovery plays an important role.