E-Discovery in Intellectual Property Patent Litigation (Part 2 of 5)

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

In this second 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. [1]  In addition, the series briefly describes the purpose behind the model order, ( describes its key provisions, and then analyzes the model order to identify some areas of continuing concern.

A Review of the key provisions of the model order: the model order attempts to get both parties to engage in targeted e-discovery by placing presumptive limits on e-discovery.  In this regard, the model order has patterned itself after Federal Rule of Civil Procedure 30, which limited deposition practice by presumptively limiting each side to 10 depositions of seven hours each.[6]

Specifically, the model order requires the parties exchange the type of core documentation key to every patent litigation — i.e., documents concerning (1) the patent, (2) the accused product, (3) the prior art, and (4) the relevant finances — before propounding email requests.[7]

Even then, the model order presumptively limits the number of custodians and search terms for all email production requests, so that any email production requests are focused on particular issues and areas for which email discovery is appropriate.[8] These limits are presumptive only, and may be modified by the parties or the court for good cause shown.[9]

Where a party seeks more discovery than agreed upon by the parties, or allowed by the court, the requesting party bears the reasonable cost of that discovery.[10] By shifting costs, the model order seeks to ensure that a party carefully balances the cost and value of the additional discovery.[11]

The model order also seeks to lower the cost of e-discovery by addressing a large source of that cost — preproduction review of documents by attorneys or other human reviewers. To minimize such preproduction review, the model order expressly provides that the inadvertent production of attorney-client privileged or work product documents during e-discovery may not be used in the pending case, and does not constitute a waiver in the pending case, in any other federal or state proceeding, or for any purpose.[12]


by Daniel B. Garrie, Esq.  a partner at Law & Forensics, an e-discovery and forensics firm, and co-author of “Dispute Resolution and E-Discovery” (2011 Thomson Reuters). Email: daniel@lawandforensics.com.


[6] See id. at 3; Fed. R. Civ. P. 30.

[7] Model Order at ¶ 8.

[8] Id. at ¶¶ 6, 7, 10, 11.

[9] Id. at ¶ 2.

[10] Id. at ¶¶ 10, 11.

[11] Id.; Introduction to Model Order at 3-4.

[12] Model Order at ¶¶ 12-14; Introduction to Model Order at 4.

[13] Model Order at ¶ 3. The Model Order also provides that discovery tactics that delay or prolong the process will be considered by the Court in determining which party should bear the costs of the discovery process. Id.