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The E-Discovery Dance For Patents: Changing The Tune (Part I)

E-Discovery in Intellectual Property Patent Litigation: Changing The Tune

In this five-part series on e-discovery in intellectual property patent litigation Daniel Garrie  analyzes the Federal Circuit’s model order regarding e-discovery in patent cases. [1]  In addition, the series briefly describes the purpose behind the model order and describes its key provisions and then analyzes the model order to identify some areas of continuing concern.

The author concludes that, while it is beyond refute that the model order is a step in the right direction in the courts’ efforts to control and manage e-discovery, the model order is only a first step. In this regard, several problems, as set forth below, can potentially arise when counsel or the courts use the model order. It is hoped that this article will encourage judges, litigants and other interested parties to continue trying to solve some of the still troubling aspects of e-discovery and e-discovery abuse.

The Model Order: An Attempt to Control and Manage E-Discovery

The model order is the Federal Circuit’s response to the exponential growth of e-discovery and related costs in cases before it.[2] As noted in the Introduction to the model order, patent cases tend to suffer from disproportionately high discovery expenses — with one study determining that the costs of an intellectual property case run almost 62 percent more than other litigations.[3]

Moreover, the exponential growth in electronic documents and communications has, intentionally or otherwise, led to what the Federal Circuit considers to be excessive e-discovery.[4]  Broad and unfettered e-discovery — particularly email-related discovery — has led to litigations where the time and cost of electronic production far outweighed the minimal benefits of marginal and cumulative disclosure, thus threatening to derail the judicial promise of just, speedy and affordable determination of disputes:

As technology and knowledge play an increasingly important role in our economy, the courts must not become an intolerably expensive way to resolve patent disputes. Specifically, litigation costs should not be permitted to unduly interfere with the availability of the court to those who seek to vindicate their patent rights — the enforcement of such rights is both an obligation of the legal system and important to innovation. Likewise, disproportionate expense should not be permitted to force those accused of infringement to acquiesce to nonmeritorious claims.
The model order provides the courts and counsel with a framework for managing the e-discovery process and the responsible, targeted use of e-discovery in patent cases. It seeks to “promote economic and judicial efficiency by streamlining e-discovery, particularly email production, and requiring litigants to focus on the proper purpose of discovery — the gathering of material information.”[5]

[1] The model order itself, as well as an introduction and discussion of the model order by the Federal Circuit Advisory Council E-Discovery Committee, is available online at http://memberconnections.com/olc/filelib/LVFC/cpages/9008/Library/Ediscovery%20Model%20Order.pdf

[2] Introduction to Model Order at 2.

[3] See id. at 1 (citing Emery G. Lee III & Thomas E. Willging, Litigation Costs in Civil Cases: Multivariate Analysis 8 (Fed. Judicial Ctr. 2010).

[4] Id. at 2.

[5] Id.; see also Model Order at ¶ 1 (“This Order … streamlines Electronically Stored Information (“ESI”) production to promote a ‘just, speedy, and inexpensive determination’ of this action”).

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