New Patent Discovery Rules
The U. S. Court of Appeals for the Federal Circuit recently unveiled a model order that would severely limit electronic discovery in patent cases. The model order, which was unanimously adopted by the Federal Circuit Advisory Council on September 27, 2011, contains the following noteworthy provisions:
• 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.
This order, if widely followed, could be extremely draconian in its effect on electronic discovery. While it is not likely to reach the heights of Zubulake and its progeny, the severe limitations put on the number of custodians and search terms that can be used during discovery is enough to put most IP litigation in a deep freeze. In typical complex litigation matters it is not uncommon to have between 25-50 relevant custodians. Furthermore, the number of search terms used in complex litigation to filter data is enough to make a Webster's dictionary blush with embarrassment. Even in the event relief is granted, the requesting party must bear the burden of the costs—even if those custodians are deemed to be relevant to the issues at hand. In effect, this model order has the potential to severely restrict the ability of both parties to fully investigate its claims.
At the very least, this order will require attorneys to be constantly in front of the court requesting relief from the court to discover new custodians or simply to add new search terms. It has the potential to bog down dockets, create new discovery disputes between opposing counsels and circumvent discovery rules and precedent already in place in many jurisdictions--including the widely followed Zubulake decisions. However, one thing to keep in mind is that this order is limited to patent cases for the time being. For that reason, we should expect the other federal jurisdictions to narrowly interpret this case until its true effect on discovery and each party’s ability to fully investigate its claims can be fairly judged.