Judge: David Folsom
Holding: Order Regarding Electronic Discovery
We've had the model order regarding e-mail discovery entered basically verbatim in one case where agreed to by the parties, referred to and its structure followed in another by agreement, and in two others had the key provision limiting custodians and terms entered, albeit with varying degrees of agreement from the parties beforehand. This order, however, was entered after a contested hearing, and copies the language of the model order fairly closely - although not without substantive changes - after determining that the model order's structure was appropriate. Following a hearing, Judge Folsom entered this order resolving the parties' dispute by stating the following.
"Defendants propose e-discovery provisions similar to those in the Federal Circuit Advisory Council’s Model Order Regarding E-Discovery in Patent Cases," the Court observed in the order. "Plaintiff has proposed that, prior to discussing limits on e-discovery, Plaintiff be allowed Rule 30(b)(6) depositions of Defendants to identify custodians." (Ed. note: The record doesn't include the defendant's proposal, so it isn't entirely clear to me which of the differences below from the model order were from the defendant and which were from Judge Folsom). Judge Folsom quizzed the parties at the hearing as to what rulings the parties had seen on this issue, and ended up siding with the defendants in part in that he rejected the position that the Plaintiff be allowed depositions to determine how many custodians were appropriate, and decided to enter an order similar to the model order. On the specific issue of e-mail discovery he entered the following:
8. Each requesting party shall limit its email production requests to a total of eight (8) custodians per producing party for all such requests. The parties may jointly agree to modify this limit without the Court’s leave. The Court shall consider contested requests for additional custodians per producing party, upon showing a distinct need based on the size, complexity, and issues of this specific case. If the parties are unable to agree on which party should bear the cost for such additional custodians, the parties should present their dispute to the Court for resolution.
9. Each requesting party shall limit its email production requests to a total of ten (10) search terms per custodian per party. The parties may jointly agree to modify this limit without the Court’s leave. The Court shall consider contested requests for additional search terms per custodian, upon showing a distinct need based on the size, complexity, and issues of this specific case. If the parties are unable to agree on which party should bear the cost for additional search terms, the parties should present their dispute to the Court for resolution. The search terms shall be narrowly tailored to particular issues. A conjunctive combination of multiple words or phrases (e.g., “computer” and “system”) narrows the search and shall count as a single search term. A disjunctive combination of multiple words or phrases (e.g., “computer” or “system”) broadens the search, and thus each word or phrase shall count as a separate search term unless they are variants of the same word. Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the production and shall be considered when determining whether to shift costs for disproportionate discovery.
How does the order differ from the model order?
Paragraph 8 differs from the model order in that: (1) it provides for eight custodians, not five (as the model order reflects and as defendants' 26(f) report proposed); (2) the Court can consider contested requests for "additional" custodians rather than for "up to five additional" custodians; and (3) it provides that if the parties are unable to agree on which party should bear the cost for such additional custodians, the parties should present their dispute to the Court for resolution while the model order states that "Should a party serve email production requests for additional custodians beyond the limits agreed to by the parties or granted by the Court pursuant to this paragraph, the requesting party shall bear all reasonable costs caused by such additional discovery."
Paragraph 9 differs in similar ways. It: (1) permits the Court to consider contested requests for "additional" search terms per custodian instead of "up to five additional" search terms; (2) adds the same provision re: submitting disputes re: cost-sharing to the Court rather than automatically imposing them on the requesting party; and (3) deletes the phrase "[i]ndiscriminate terms, such as the producing company's name or its product name, are inappropriate unless combined with narrowing search criteria that sufficiently reduce the risk of overproduction" (which is likely not substantive, as I read it).
The Court's order also did not include the following provision from the model order - probably also not a substantive omission as it is presumably unnecessary in part because of the scheduling order, and unnecessary in part in that perhaps the Court did not believe the admonitory language was necessary in this case:
Email production requests shall be phased to occur after the parties have exchanged initial disclosures and 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.
But the rest of the model order's provisions are there, essentially verbatimn.