Following the lead of Federal Circuit Chief Judge Randall Rader,
the Eastern District of Texas recently proposed its own Model Order
Regarding E-Discovery in Patent Cases. This Model Order was
included as part of the General Order Amending Local Rules published
for public review by the Eastern District on February 27, 2012.
Although still subject to slight revisions following the period for
public notice and comment, these amendments — including
the Model Order — will most likely issue in a form very
similar to the version put forth by the court this week.
As was the case with Judge Rader's Model Order, the Eastern
District's Model Order places many important limitations on
both the scope and format of e-discovery in patent cases.
(See General Order, at App. P.) Of primary importance are
the restrictions placed on e-mail production. In particular, the
Model Order eliminates any requirement to produce e-mail in
response to a request made under Fed. R. Civ. P. 34 or 45, and also
exempts e-mail from the mandatory disclosures required by the Local
Patent Rules. Under the Model Order, e-mail need only be produced
in response to a specific, narrowly tailored e-mail production
request from another party. Moreover, absent a showing of good
cause or an agreement among the parties, a party must limit any
such requests to no more than eight custodians per producing party,
and no more than 10 narrowly tailored search terms per custodian.
To help the requesting party determine the proper custodians, the
Model Order requires the producing party to provide a
"specific identification of the fifteen most significant"
e-mail custodians. The Model Order also grants the requesting party
five written discovery requests and one deposition per party as
tools to help identify the proper custodians and determine the
proper search terms.
In addition to the specific limitations on e-mail discovery, the
Model Order also places important limits on the format of
Electronically Stored Information (ESI) in general, and the
locations for which such ESI must be searched. For instance,
parties are not required to include any metadata in their
production, other than the date, time, and complete distribution
list when available. All documents shall be produced as single-page
TIFF files with appropriate load files and unitization
requirements. Parties are not required to create text-searchable
documents, but must produce documents in text-searchable format
when such information is available to the producing party (or its
counsel). Parties must still store backup data, but, absent a
showing of good cause, parties do not need to restore any form of
media upon which backup data is maintained, including backup tapes,
disks, SANs, or other forms of media. Moreover, voicemails, PDAs,
and mobile phones are deemed not reasonably accessible and need not
be collected or preserved, absent a showing of good cause.
What This Means for You
As with any of the court's model orders, the Model Order Regarding E-Discovery in Patent Cases may be modified at the court's discretion, or by agreement of the parties. Litigants should also keep in mind that the Model Order is not a local rule per se, and therefore will not supersede any discovery orders already in place in ongoing cases. Nevertheless, even with respect to ongoing cases, this Model Order is both instructive and insightful into the Eastern District's views on the proper scope of e-discovery in patent cases.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
