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

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.

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