Advanced Processor Technologies v. Analog Devices, 2:11cv019-DF (11/17/11)
Judge: David Folsom
Holding: Discovery Order
Before he left the bench, Judge Ward directed the parties in this case (as in many, many others) to submit proposed discovery and docket control orders. Last week Judge Folsom signed the parties' agreed discovery and docket control orders in this case - there were no disputes.
While the order largely tracked the standard discovery order used by Judge Ward, the parties proposed several fairly minor changes which I thought represented useful modification to the standard language Judge Ward had used for the past twelve years, and wanted to highlight them here. The additional provisions are in redline:
- Disclosures. Except as provided by paragraph 1(h), and, to the extent not already disclosed, by December 2, 2011, each party shall disclose to every other party the following information in lieu of the requirements of FRCP 26(a)(1):
Comment: for a number of years, parties have sometimes been unsure whether the Paragraph 1 disclosures were in addition to FRCP 26(a)(1) or in place of them. The parties' additional sentence clarified that they wholly replace the disclosure under the rules - which makes sense because they are substantively broader.
- Protective Order. The Parties shall meet and confer regarding a Protective Order. Until a protective order is entered, all designated documents will be treated as confidential-outside counsel only, with disclosure of the document or information being limited to each Party’s outside attorneys of record and the employees of such outside attorneys, and thereafter dealt with according to the terms of the protective order entered by the Court. The absence of a protective order entered by the Court shall not be a basis for withholding discovery or disclosures unless there is disagreement as to the scope of a prosecution bar, or, with respect to source code only, disagreement as to the terms for source code review. See P.R. 2-2.
Comment: Actually the entire paragraph was drafted by the parties to essentially incorporate PR 2-2, which deals with the confidentiality of production pending the entry of a protective order, but the part I wanted to highlight was the last section, which modifies 2-2 by addressing two common impediments of document production prior to the entry of a protective order. The first allows a party to withhold document discovery if there is a disagreement as to the scope of the prosecution bar as to the counsel that view the production, and the second exempts source code production until the terms of source code review are worked out. Both are useful caveats to the general rule of PR 2-2.
3. Additional Disclosures. Each Party, without awaiting a discovery request, shall provide, to the extent not already provided, to every other Party the following ... by March 9, 2012, a copy of all documents, electronically stored information (except for e-mails), and tangible things in the possession, custody, or control of the party that are relevant to the pleaded claims or defenses involved in this action, except to the extent these disclosures are affected by the time limits set forth in the Patent Rules for the Eastern District of Texas.
 For guidance in evaluating whether a particular piece of information is relevant to the pleaded claim or defense in the action, the Court directs the parties to Local Rule CV-26(d).
Paragraph 3 disclosures (paragraph 2 in Judge Davis' court) deal with document production, and have historically required production of "all documents ... that are relevant to the pleaded claims or defenses involved in this action." The important change here (I'll get to the e-mail exception in a moment) is the provision of a footnote that explicitly directs counsel's attention to Local Rule CV-26(d), which for the past eleven years has defined what specifically "relevant to the claim ore defense" means (and was in the local rules for ten years prior to that defining the scope of disclosures under the local rules). It reads:
(d) Relevant to the Claim or Defense. The following observations are provided for counsel’s guidance in evaluating whether a particular piece of information is “relevant to the claim or defense of any party:”
(1) it includes information that would not support the disclosing parties’ contentions;
(2) it includes those persons who, if their potential testimony were known, might reasonably be expected to be deposed or called as a witness by any of the parties;
(3) it is information that is likely to have an influence on or affect the outcome of a claim or defense;
(4) it is information that deserves to be considered in the preparation, evaluation or trial of a claim or defense; and
(5) it is information that reasonable and competent counsel would consider reasonably necessary to prepare, evaluate, or try a claim or defense.
To paraphrase the rule, to be required to be disclosed it appears that the information must be likely to have an influence on the outcome of a claim or defense, or something that reasonable and competent counsel would consider reasonably necessary to prepare the case. Arguably, it is not information that “might” have an influence, might be useful, or would be merely relevant. In other words, "all documents relevant to the claim or defense" is a term of art whose application is informed by consideration of the local rule. The citation to the local rule makes that clear that the local rule is a good source for determining what is and is not required to be produced under this provision.
3. Additional disclosures
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(j) After the exchange of the parties’ initial disclosures, Plaintiff shall designate up to five (5) document custodians of each Defendant from which the discovery of electronic mail may be obtained, and each Defendant shall designate up to five (5) document custodians of Plaintiff from which the discovery of electronic mail may be obtained. The propounding party may select up to twenty (20) search terms narrowly tailored to particular issues. The parties shall meet and confer concerning the proper timeframe for electronic mail discovery. In the event of a dispute concerning one or more search terms or the timeframe, the parties shall meet and confer in an effort to resolve the dispute. A party may obtain discovery from additional custodians only upon a showing of good cause.
(k) Voicemails, PDAs and backup tapes are deemed not reasonably accessible and need not be collected and preserved. A party may obtain discovery of such materials only upon a showing of good cause.
The parties in this case also agreed to exempt e-mail discovery from the paragraph 3 disclosures, and deal with it separately. They agreed on a 5/20 plan, with five document custodians to be searched, using up to 20 terms "narrowly tailored to particular issues", with the parties to work together on the time frame for searches. Discovery from additional custodians would require good cause. This provision tracks in many ways the substance of Judge Everingham's order in the Stambler case. The parties also made headway by agreeing that voicemails, PDAs and backup tapes were presumptively not to be searched, absent a showing of good cause.
Each of the cases in which Judge Ward required the parties to submit orders has resulted in substantively different orders as parties negotiate orders appropriate to their cases - and in some instances submit some of their unresolved issues to the Court for resolution. But I thought this order provided some useful revisions to the commonly-used language and was worth calling out for review.