On Sep. 27, 2011, at the Eastern District of Texas Bench Bar Conference, Chief Judge Randall Rader of the Federal Circuit revealed a model order that places dramatic limits on e-discovery in patent cases. Judge Rader spoke on the status and direction of patent litigation in the United States, contending that “the greatest weakness of the U.S. court system is its expense. And the driving factor for that expense is discovery excesses.”

While aimed at patent cases, this model order is easily adaptable, and can be a powerful tool to limit the cost and inconvenience of electronic discovery. Litigants are already attempting to convince courts to adopt these same restrictions in other types of cases.

The model order places tighter and more specific constraints on discovery of electronically stored information (ESI) than those currently provided by the Federal Rules of Civil Procedure.

The limitations include:

• Cost shifting for disproportionate ESI production requests.
• Exclusion of peripheral metadata from ESI requests absent a showing of good cause.
• Exclusion of email or other forms of electronic correspondence (collectively “email”) from “general” ESI requests. To obtain email, parties must set out specific email production requests.
• Email production requests shall only be submitted for specific issues, not “general” discovery of a product or business.
• Email production requests must identify the custodian, search terms and time frame.
• Email requests are limited to five custodians per producing party absent an agreement between the parties or a showing of “distinct need” to the Court
• Requesting parties are limited to a total of five narrowly tailored search terms per custodian per party.
• The receiving party shall not use ESI that the producing party asserts is attorney-client privileged or work product protected to challenge the privilege or protection
• Inadvertent production of a privileged work product protected ESI is not a waiver
• Mere production of ESI in a litigation as part of a mass production does not constitute a waiver

One of the limitations specifically addresses e-discovery in patent cases:

Email production requests shall be phased to occur after the parties have exchanged initial disclosures, basic documentation about the patents, the prior art, the accused instrumentalities and the relevant finances. While this provision does not require the production of such information, the Court encourages prompt and early production of this information to promote efficient and economical streamlining of the case.

This provision can be adapted for application to other areas of litigation. Although the model order was written for patent litigation, it should be persuasive to many courts given that it addresses fundamental problems with e-discovery faced by all litigants. The Federal Circuit Advisory Council E-Discovery Committee that drafted the model order included judges from three district courts: Chief Judge James Ware (N.D. Cal.), Judge Virginia Kendall (N.D. Ill.), and Magistrate Judge Chad Everingham (E.D. Tex.).

Each of these judges handles not only patent cases, but the full array of civil litigation. A close eye is being kept on these courts to see if they will implement the same e-discovery restrictions in their non-patent cases. This could add additional support for convincing other courts to embrace this attempt to limit the staggering cost of e-discovery.

“Our courts are in danger already of becoming an intolerably expensive way to protect innovation or prove freedom to operate,” Rader said in his remarks at the conference. “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.” The model order, however, has the potential to reduce ESI production costs dramatically and make the e-discovery process more streamlined.

Insisting on incorporating these provisions into a court order at the onset of litigation can help curb burdensome and costly requests for irrelevant material, saving clients' time and inconvenience and making ESI production more focused and less wasteful. With limits on the number of custodians and search terms, requesting parties will need to exercise due diligence to ensure their requests are targeted at specific information needed for the case.

The payoff should be lower costs and a better chance that litigation decisions can be driven by the merits of the dispute instead of the high price of e-discovery. On the other hand, the limitations are substantial. Parties will want to assess the cost savings versus their strategic needs for broad discovery on a case-by-case basis before deciding whether to advocate for or object to these restrictions.