IP: Patent litigation e-discovery procedures should be evaluated early in the case

Different districts use different approaches to e-discovery that are imperative to know before deciding a patent case's venue

Electronic discovery is becoming increasingly burdensome in litigation. It is not unusual for e-discovery costs to run into the millions of dollars in large, complex cases. Moreover, many electronically stored communications and documents produced through e-discovery are merely tangential to the issues at the heart of the litigation and add little value to the advancement of a case — especially in patent suits, where the issues tend to be narrow and focused. However, these non-essential documents continue to be collected, processed, reviewed and produced in order to comply with the broad relevance standards of the federal rules, which make no distinction between e-discovery and other, less burdensome forms of document discovery. The burden is, of course, particularly acute for large businesses with world-wide operations and millions of documents stored in electronic form.

Many district courts have recognized the disproportionate costs associated with patent litigation and have attempted to reign in e-discovery. The Eastern District of Texas, Northern District of California, and the District of Delaware are good examples of courts that have attempted to level the e-discovery playing field for all litigants.

The e-discovery rules in the Eastern District of Texas limit email requests to eight custodians and ten search terms (discouraging the use of overly broad, all-encompassing terms, such as a company’s name). Additionally, they do not require that produced documents be searchable or that metadata be produced, with the exception of metadata showing the date and time a document was sent, the identity of the sender and the recipient list. The rules also specify that e-discovery should be provided in the industry-standard format of TIFF.

In contrast to the Eastern District of Texas, the Northern District of California has not promulgated rules, and instead has issued a set of e-discovery guidelines. This district, like several other jurisdictions, provides litigants with general guiding principles, such as urging the parties to cooperate in limiting and reducing wasteful e-discovery, but does not provide specific limitations, thereby increasing the uncertainty that parties face with respect to the costs they may incur if litigating there. For example, the guidelines provide no limit on the number of search terms, there is no requirement to produce metadata, and the documents may be produced in a variety of formats by agreement between the parties.

The District of Delaware takes a slightly different approach. It limits email to ten custodians and ten search terms, requires metadata and directs the production of text-searchable PDFs or TIFFs. It also provides a default standard for the inspection of computer code, unlike the Northern District of California and the Eastern District of Texas. Moreover, Delaware recognizes the high burden that logging privileged e-documents may place on the parties and attempts to reduce the burden. For example, Delaware does not require the parties to log documents created after the filing of the complaint and directs the parties to negotiate more efficient ways to exchange information about privileged documents than the traditional document-by-document log.

As these three examples demonstrate, litigants face significantly different e-discovery burdens based on the jurisdiction in which their litigation is pending. These variations may influence not only the costs involved, but also the substantive outcome of the case (especially when considering the limits on search terms and custodians). Thus, it is imperative to consider the local e-discovery climate of potential jurisdictions in reaching a decision regarding where your patent case should be brought, or for defendants – whether to seek a change in venue.

Contributing Author

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Karen Bromberg

Karen H. Bromberg is a partner with Cohen & Gresser LLP and heads its intellectual property and technology group.

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Contributing Author

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Francisco Villegas

Francisco A. Villegas is counsel in Cohen & Gresser's intellectual property and technology group.

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