By Gregory D. Miller and Aaron H. Gould

The U.S. Court of Appeals for the Federal Circuit has recently unveiled a model e-discovery order intended to limit e-discovery in patent cases. The stated purpose of the order is to control excessive e-discovery, including disproportionate and overbroad e-mail production requests, which carry staggering time and production costs and have a debilitating effect on litigation. The court believes that e-discovery in patent litigation generally pertains to a narrow set of issues. The order is intended to narrow the scope of parties’ e-discovery requests to the most relevant aspects of a patent case. The court hopes the order in practice will curb disproportionate e-discovery costs, with the goal of making the court more available to all parties seeking to vindicate their patent rights.

Highlights of the order include the following:

• Costs will be shifted for disproportionate electronically stored information (ESI) production requests pursuant to Rule 26. Meaningful compliance with the order and efforts to promote efficiency will be considered in cost-shifting determinations. Likewise, a party’s nonresponsive or dilatory discovery tactics will be considered.

• General ESI requests under Rule 34 and 45 shall not include metadata, absent a showing of good cause.

• Requests for email production must be separate from other general ESI requests and must pertain to specific issues, not general discovery of a product of business.

• Each requesting party is limited in its email requests to five custodians per producing party and five search terms per custodian. The parties may jointly agree to modify these numbers without the court’s leave. The court will consider contested requests for up to five additional custodians per producing party and five additional search terms per custodian, upon a showing of distinct need.

• Pursuant to Rule 502, the inadvertent production of a privileged or work-product-protected ESI is not a waiver in the pending case or in any other federal or state proceeding.

The order disfavors the use of broad email requests and places specific limits on the manner and use of these types of requests in patent cases. The court specifically states in its introduction, that it views email requests as tangential to the most significant issues in patent litigation. Therefore, it is unclear whether the order foreshadows the use by other Courts of limitations on e-mail requests or is merely a product of this Court’s view as to the relevance of emails to patent cases. The court’s statements regarding the pertinence of email requests to patent litigation seems to limit the applicability of the order’s provisions on email requests, especially in cases—such as employment actions—where emails commonly play an important role.

However, an important takeaway from this order is that the significance of ESI and categories of ESI will be different in every case. It is important for parties and courts to work together to tailor e-discovery based on relevance to the issues with the goal of curbing discovery abuse and bringing down litigation costs. It is clear from this order and the Seventh Circuit’s Pilot Program that courts are now more willing to take a proactive role to provide parties with e-discovery guidelines that go beyond what is provided for in the rules, to further those goals. Litigants can expect that more of these types of programs, orders, and guidelines are forthcoming from other courts and jurisdictions.

Look for a full analysis of the implications of this model order on other arenas of civil litigation in an upcoming issue of our newsletter.


Greg Miller is co-managing director and Aaron Gould is an associate at Podvey, Meanor, Catenacci, Hildner, Cocoziello & Chattman, P.C.