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Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit has unveiled a model order that would limit e-discovery in patent cases. At the 2011 Eastern District of Texas Bench Bar Conference in Irving, Texas, on Sept. 27, Rader said the Federal Circuit Advisory Council unanimously voted to adopt the proposed “Model Order on E-Discovery in Patent Cases.” Rader’s standing-room only talk was billed as “ Thoughts on the Status and Direction of Patent Litigation in the United States.” The Eastern District of Texas Bar Association and the Federal Circuit Bar Association jointly ran the three-day event. The model order proposes several limits on the production of electronically stored information. These are laid out in the following provisions: • Metadata is excluded from e-discovery production requests without “a showing of good cause.” • E-mail production requests must be for specific issues “not general discovery of a product or business.” • E-mail production requests should be delayed until after disclosures about the patents, the accused uses of the invention, relevant financial information and the prior art — published information about the subject matter of the claimed invention, including issued patents. • E-mail requests are limited to five so-called custodians per producing party and five search terms per custodian. • Courts may consider up to five additional custodians per producing party and five additional search terms per custodian. Litigants who submit e-discovery requests to adversaries that exceed court orders and the parties’ agreement must pay for the extra production. • Receiving parties are barred from using e-discovery that the producing party asserts is attorney-client privileged or work product protected. • The production of electronic information in a mass production, or the inadvertent release of privileged or work product protected electronic data, is not a waiver or permission to use it. According to a transcript of the speech, Rader said “the greatest weakness of the U.S. court system is its expense. And the driving factor for that expense is discovery excesses.” “Our courts are in danger already of becoming an intolerably expensive way to protect innovation or prove freedom to operate,” the speech went on. “These vast expenses can force accused infringers to acquiesce to non-meritorious claims. This only serves as an unhealthy tax on innovation and open competition.” Rader compared the model e-discovery order to the Federal Rule of Civil Procedure 30, which limits cases to 10 depositions and seven hours per deposition. He also said that veteran lawyers “panicked” when deposition limits were first rolled out, but about two decades later, “few question the wisdom of these limits. And the era of the endless deposition is fortunately over.” The Federal Circuit Advisory Council tapped a subcommittee to draft the model order. The group included Rader and three other judges: Chief Judge James Ware of the Northern District of California, Judge Virginia Kendall of the Northern District of Illinois and Magistrate Judge Chad Everingham of the Eastern District of Texas. Advisory council chairman Edward Reines, a partner in the Redwood Shores, Calif., office of Weil, Gotshal & Manges, also served on the subcommittee with four other advisory council members. They are Tina Chappell of Intel Corp.; Richard “Chip” Lutton of Apple Inc.; Joe Re, a partner at Irvine, Calif.-based Knobbe, Martens, Olson & Bear; and John Whealan, an associate dean at George Washington University Law School. Steve Susman, a partner at Houston’s Susman Godfrey, was the only committee member who isn’t on the advisory council or a judge. In a telephone interview after his speech, Rader said, “we simply can’t afford to allow discovery to endanger the entire system. The current expense is such a burden on the system that it really does outweigh any benefit.” Also following Rader’s speech, Reines said, “E-discovery needs to be right sized. There’s too much wasted energy on irrelevant material that clouds the focus on specific areas that warrant probing discovery.” Reines added that the default limits in the model discovery order aren’t necessarily one size fits all, “but they should move the center of gravity to more reasonable and less wasteful discovery practices.” And although it’s unlikely that all federal courts will embrace the model order, Reines said “I hope and believe it will be influential in the way people think about e-discovery.” The Federal Rules of Civil Procedure were amended nearly five years ago, in December 2006, to recognize e-discovery as a separate discovery category. Sheri Qualters can be contacted at [email protected].

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