E-Discovery in Intellectual Property Patent Litigation: Changing The Tune
In this third post of the 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.  In addition, the series briefly describes the purpose behind the model order, describes its key provisions, and analyzes the model order to identify some areas of continuing concern.
The model order is a good first step at addressing the major problem with e-discovery and intellectual property litigation: its ever-increasing complexity, cost and expense. However, the solutions provided by the model order raise several concerns, four of which are identified and discussed below.
The Model Order’s Triggers for Cost Shifting Allow the Parties to Game the System and May Offer Disincentives to More Economical Alternatives in E-Discovery
The first potential area of concern with regards to the model order arises from the model order’s reliance on disproportionate costs to trigger cost shifting. In this regard, it is possible for counsel for the producing party to manipulate the discovery process so as to increase costs and force the requesting party to bear those costs. Specifically, the costs of performing data collection or execution can sometimes be substantially less costly if done in-house, than if a third-party vendor collected and performed the search.
For example, a large technology firm might have a proprietary document-tracking platform that runs on legacy hardware, and an in-house information technology team that is familiar with and manages this system. In such cases, it would be substantially more costly to retain a third-party vendor, than to use the in-house IT department. Yet, that expense arguably could still be presented to the court and opposing counsel as a true cost in e-discovery, and be used to deter, narrow or shift the costs of e-discovery.
Indeed, the producing party can contend that using a third-party vendor is appropriate, because doing so will avoid any concern that in-house IT staff will inevitably skew the production results in favor of the producing party. The end result is that a party can, or at least can try, to intentionally trigger cost shifting as a tactic in litigation.
Courts and litigants should be aware of this tactic, and raise the issue during the initial discovery conference mandated by Federal Rule of Civil Procedure 26. One solution is for the court can encourage parties to utilize their own IT departments when possible to collect and produce documents, as long as best practices are followed by the in-house IT department in collecting and producing those documents.
The Model Order Default Standard That Metadata Is Not To Be Produced Absent A Showing Of Good Cause Ignores The Critical Value Metadata Provides When Issues Exist Around Authenticity Or Authorship
The second area of concern with the model order is its default standard of no metadata (i.e., “data about data”) absent a showing of good cause. In a segment of patent-related disputes that focus on the date of filing, on priority, or on who is the creator of a patent, metadata is likely to be critical element that provides critical information regarding such key points as dates, times, authorship and other related elements.
Although, the model order does allow parties to request metadata upon a showing of “good cause,” it is an uphill effort for counsel to establish “good cause” around metadata because even after the initial discovery conference, litigants may not have enough information to determine specifically what metadata they need in order to make a showing of “good cause. One solution is for the court to maintain a lenient standard for “good cause,” and allow relevant facts to emerge early in the case to save time and money for litigants.