Recent developments by the courts, administrative agencies, and Congress include rules, guidelines, and proposed legislation aimed at limiting discovery in patent litigation. Practitioners seeking to balance efforts to reduce discovery costs with preserving relevant documents according to the rules should be aware of the continuing trend to limit the discovery of electronically stored information ("ESI").
In 2011, Judge Randall Rader noted that patent litigation, in particular, has discovery costs that are significantly higher than in general litigation. To address this issue, the Federal Circuit Advisory Council recommended a model order that focused on streamlining the production of ESI, with an emphasis on limiting the production of email. The model order: (a) excludes e-mail from general production requests for ESI; (b) provides limits on the number of custodians and search terms; (c) precludes production of certain metadata absent good cause; and (d) requires a party serving broader discovery to bear all reasonable costs. (However, all model orders have since been removed from the Federal Circuit's website.)
Nevertheless, several federal district courts have adopted similar model orders and guidelines. For example, the Eastern District of Texas issued a model order in 2012, that includes limitations on the number of custodians and search terms. The model order also provides guidance on discovery procedures such as the format of ESI production and the sources of data that must be preserved. The District of Delaware provides default discovery standards with guidance regarding initial discovery in patent litigation and specific e-discovery issues including search methodology, format, and metadata fields. The Northern District of California also adopted e-discovery guidelines that include a model order and an ESI checklist for use during the Rule 26(f) meet-and-confer process.
It should be noted that adopting a model order or adhering to court guidelines does not mean that discovery costs will be automatically lowered or that discovery disputes will be avoided. In a recent patent infringement case, the parties had a number of discovery disputes resulting in costly motion practice and additional review of ESI, even though they followed the court's model order. See MediaTek, Inc. v. Freescale Semiconductor, Inc., 2013 U.S. Dist. LEXIS 122911 (N.D. Cal. Aug. 28, 2013). In MediaTek, when the parties could not agree on search terms for the production of email, the court ordered one party to run test searches before objecting to the terms and required both parties to meet and confer in person before approaching the court with additional discovery disputes. The court also required the parties to agree on a production schedule. Thus, while the local rules and model orders regarding ESI provide guidance, parties should develop reasonable electronic discovery parameters customized for the particular issues involved in their matter.
Discovery procedures in administrative proceedings before the ITC have also recently changed. This summer, the ITC adopted amendments to Section 210.27 of its rules of procedure (19 C.F.R. § 210) to "reduce expensive, inefficient, unjustified, or unnecessary discovery practices in agency proceedings while preserving the opportunity for fair and efficient discovery for all parties." Under the amended rule, a party can object to an e-discovery request if asked to produce data that is "not reasonably accessible because of undue burden or cost." Further, an administrative law judge also has the discretion to limit discovery if the information being sought is duplicative or can be obtained through less expensive means.
Congress is also focused on efforts to limit discovery in patent litigation. On December 5, 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act." Rep. Bob Goodlatte (R-Va) originally introduced this legislation in an effort to curb abusive patent litigation. Among other things, the proposed legislation (1) requires rules and procedures on core discovery; (2) requires that the costs for any additional discovery be paid by the requesting party; and (3) limits discovery until after the court issues a claim construction ruling.
Furthermore, the Judicial Conference Advisory Committee on Civil Rules proposed a new set of amendments to the Federal Rules of Civil Procedure that addresses issues related to ESI. One proposed change limits discovery to that which is "proportional to the needs of the case ... considering the amount in controversy, the importance of the issues at stake in the action, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit." Other proposed changes provide the courts with the discretion to shift discovery costs and the discretion to impose sanctions where failure to preserve information caused "substantial prejudice in the litigation based on willful conduct or in bad faith" or "irreparably deprived a party of any meaningful opportunity to present or defend against the claims in the litigation." The comment period on these proposed changes closes on February 15, 2014.
Ultimately, the strategy for electronic discovery in any particular matter will depend on case-specific factors such as the type of case, the case budget, deadlines, the amount and type of ESI, and the venue of the matter. Thus, practitioners should be aware of the trend in many jurisdictions to attempt to reign in ESI discovery costs through local rules, model orders, and other guidelines. Even in jurisdictions where such rules or guidelines are not in place, attorneys may consider relying on the persuasive authority of rules from other jurisdictions when preparing proposed discovery plans. However, practitioners should always tailor their proposed discovery plans to the particular issues in their cases.
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