United States: Northern District Adds Patent-Specific Model Order Re: Discovery Of ESI To Its Roster Of ESI-Related Documents

Last Updated: June 13 2014
Article by Monte Cooper and Daniel Justice

As any litigator knows, discovery of electronically stored information ("ESI"), while providing benefits like keyword searching and electronic organization, can also turn into a beast because of the volume of electronically stored documents in modern businesses.  The sheer volume of ESI can substantially drive up the cost of document collection and production and insert significant delays in litigation.  To address these negative effects, in November 2012 the U.S. District Court for the Northern District released a set of best practices Guidelines for the discovery of ESI, an ESI Checklist for use during Rule 26(f) meet and confers, and a Model Stipulated Order regarding the discovery of ESI.

The 2012 Guidelines, Checklist, and Model Stipulated Order have been useful tools in assisting litigants reduce costs during e-discovery in general litigation.  Patent cases, however, are highly complex and raise unique e-discovery challenges with attendant disproportionately high discovery expenses that are not effectively dealt with by the 2012 Guidelines.

To address this issue, in April of this year, the Northern District issued a new patent-specific "[Model] Stipulation & Order Re: Electronically Stored Information for Patent Litigation."  In introducing the new Model Order, Chief Judge Wilken explained: "Given the large amount of electronically stored information pertinent to patent cases and the special case management needs for such cases, we believe that a separate model stipulated order for ESI for consideration in patent cases may be useful in the management of that litigation."  The new Model Order was the product of the experience of the Bench, coupled with input from patent litigation practitioners.  The patent-specific Model Order focuses solely on cost-shifting and production of email, and is meant to supplement the other discovery rules and orders.  Some highlights include:

  • Paragraphs regarding cost-shifting for disproportionate ESI production requests, nonresponsive or dilatory discovery tactics, or conversely, meaningful compliance and efforts to promote efficiency.
  • A ban on email in general ESI production requests.  Instead, to obtain email parties must propound specific email production requests.
  • Limiting email production requests to five custodians, and five search terms per custodian (parties can jointly agree to modify this number without the Court's leave).
  • The Court's standard when considering contested requests for additional terms.
  • Rules regarding the nature and scope of appropriate search terms, such as how to count conjunctive versus disjunctive word combinations, and the effect of narrowing search terms on the cost-shifting determination.

The Guidelines, Checklist, and Model Orders are available here: http://www.cand.uscourts.gov/eDiscoveryGuidelines

As background, the 2012 Guidelines were created for the express purpose of "encourag[ing] reasonable electronic discovery with the goal of limiting the cost, burden and time spent, while ensuring that information subject to discovery is preserved and produced to allow for fair adjudication of the merits."  These Guidelines were developed by a Bench-Bar committee chaired by Magistrate Judge Elizabeth D. Laporte, in partnership with the Court's Rules Committee.  According to Judge LaPorte, "[t]hese tools are designed to promote cooperative e-discovery planning as soon as practicable that is tailored and proportionate to the needs of the particular case to achieve its just, speedy and inexpensive resolution, consistent with Rule 1 of the Federal Rules of Civil Procedure."

While use of the Checklist is encouraged, paragraph six of the Standing Orders for all judges in the Northern District requires a report in the Joint Case Management Statement certifying that the parties reviewed the Guidelines, and paragraph eight requires a report as to whether the parties considered entering into a stipulated e-discovery order.  As Judge Laporte explained, "[t]he Court requires counsel to be familiar with these tools and confirm in the initial case management statement that they have reviewed the Guidelines regarding preservation and decided whether to enter into a stipulated order governing e-discovery, in light of the Model Stipulated Order."

The new patent-specific Model Order largely tracks the "Model Order Regarding E-Discovery in Patent Cases" originally created by the Federal Circuit Advisory Council (FCAC) and unveiled by Chief Judge Randall R. Rader in September 2011.  Almost from the moment of its unveiling, various judges and magistrate judges implemented modified versions of the FCAC's Model Order.  For example, in March of 2012, the Eastern District of Texas unveiled its own Model Order Regarding E-Discovery in Patent Cases, which also proved to be a useful tool for creating case-specific orders governing electronic discovery

However, the new Model Order issued by the Northern District in April is not identical to the FCAC's model order or any of the other patent-specific model orders that have issued up until now.  Instead, the new Model Order reflects the experience gained from the Northern District's Bench in addressing problems with electronic discovery in patent cases   Hopefully, the Model Order is applied in future patent litigation, successfully reducing the often-exorbitant e-discovery costs associated with patent litigation in the Northern District.  As Judge Rader pointed-out during his remarks at the original unveiling of the FCAC Model Order, "for this Model Order to have a real impact, district judges will need to put these suggestions (or some variation) into practice."  The Northern District has heard Judge Rader, and taken an important step towards judicial economy.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
23 Jan 2019, Speaking Engagement, New York, United States

New York partner Rich Martinelli will be a featured panelist during the Society of Physician Engineers' event, "Intellectual Property Law & Tax Credits for Life Science Companies."

29 Jan 2019, Speaking Engagement, New York, United States

Please join Orrick partner Jay Jurata at this year's Joint NGMN and ITU Conference on January 29-30 in Geneva, Switzerland.

27 Feb 2019, Conference, Las Vegas, United States

Partner John Narducci will be discussing The Impact of the Tax Reform Act on Valuations at ABI’s Valcon 2019 Conference.

Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions