For companies daunted by the high cost of intellectual property litigation, some relief may be at hand in the form of proposed limits on the discovery process.
A council that advises the U.S. Court of Appeals for the Federal Circuit last year decried the use of discovery as a "tactical weapon." It pinpointed the increasing size of requests for electronic documents, noting "disproportionate, overbroad email production requests" that "have a debilitating effect on litigation." Less than 1 in 10,000 electronic documents produced in discovery ends up on the exhibit list, the council estimated.
The council issued a new Model Order, which specifies that each party may request email retained by only five people—known as custodians—and five search terms per custodian. If one side wants more emails, it must pay for the cost of production.
The U.S. Court of Appeals for the Federal Circuit is the appeals court for patent cases. Judges for the U.S. District Court—where patent cases are heard first—are not required to adopt the new order. But it was adopted recently by a magistrate in a case in the Northern District of California, and Morrison & Foerster partner Brian Kramer says he expects more judges to do the same.
"This is going to save litigants a lot of money by forcing people to think about what discovery they really want earlier, rather than just asking for everything," Kramer says.
He adds that this fee-shifting provision is one of the most intriguing aspects of the model order. "Any time you have an opportunity to send your opponent a bill, it makes things interesting."
Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
© Morrison & Foerster LLP. All rights reserved