Patent litigation can be incredibly expensive, in part because of the high costs involved with e-discovery. The relevance standards of the federal rules fail to distinguish e-discovery from other, less burdensome forms of discovery. Thus, much of the electronically stored information (ESI) produced at great cost is collected not to advance the case, but rather to comply with the broad relevance standards. In September 2011, the Federal Circuit Advisory Council adopted a Model Order governing e-discovery, and several district courts have since used the guidelines established and implemented their own e-discovery strategies in an attempt to reduce the burdens associated with e-discovery. The burdens of e-discovery are primarily reduced by limiting the scope of data sources and the quantity of custodians and search terms in e-mail discovery requests.
In limiting the scope of data sources, the Eastern District of Texas, one of the busiest patent litigation venues in the nation, adopted a Model Order requiring all e-mail production requests be specific, rather than part of general ESI production requests. Also, voicemails, PDAs and mobile phones are not considered “reasonably accessible” sources requiring ESI production, unless there is a showing of good cause.
For all e-mail production requests, the Eastern District of Texas’s Model Order also limits the number of custodians to 8 per producing party, although parties can agree to modify this limit and the court will consider contested requests for changing the number of custodians based on the specific needs of the case. Although the Northern District of California has not adopted its own Model Order, it has similarly limited the number of custodians to 10 per producing party in some of its cases.
The Eastern District of Texas’ Model Order also requires parties to narrowly tailor search terms to particular issues, and limits email production requests to 10 search terms per custodian per party, subject to agreed upon modifications or contested requests heard by the Court. The Northern District of California has been more liberal in this regard, limiting parties to 20 or 25 search terms per custodian per party in its cases.
In seeking to alleviate the time-consuming and costly burdens associated with e-discovery, the method by which e-discovery is conducted in patent cases has changed, and varies significantly depending on the jurisdiction. Thus, patent litigants must consider the e-discovery procedures used in potential jurisdictions, as the differences could drastically impact the cost and outcome of their client’s case.