Model order for ediscovery is not just for patent troll cases

DCG Systems, Inc. v. Checkpoint Technologies, LLC, 2011 WL 5244356 (N.D. Cal. November 2, 2011)

In September 2011, the Federal Circuit promulgated a model order for courts to use in managing the high costs of ediscovery in patent cases. A key feature of the model order is restrictions on email production: requests to produce email must focus on particular issues. And the requesting party must further limit the requests by using a limited set of search terms, with production coming from a limited set of people (custodians).

Defendant Checkpoint asked the court to enter a version of the model order. (The proposed version differed from the model order in the number of keywords and custodians and on an issue of metadata.) The court granted defendant’s motion.

Plaintiff DCG objected to the entry of the order. It argued that since this was a case between competitors, and not a case brought by a nonpracticing entity (an “NPE,” or sometimes called a “patent troll”), the discovery would be improperly impeded by the model order’s limitations on email discovery.

NPE or patent troll cases often involve asymmetrical discovery – the plaintiff has few documents but the defendant has many. And some commentators have proposed that the model ediscovery order seeks to reduce the ill-effects of this asymmetry. In this case plaintiff argued that it would need discovery on legitimate issues that may have arisen with an actual competitor, e.g., whether defendant copied plaintiff’s technology and whether plaintiff was entitled to an injunction. Plaintiff’s argument presupposed that the model order’s limitations would cut into the scope of that purported legitimate discovery.

The court rejected plaintiff’s arguments. It found that: (1) nothing in the model order or the Chief Judge of the Federal Circuit’s speech unveiling the order suggested that it was intended only for NPE cases, and (2) there was no reason to believe that non-NPE (competitor) cases presented less compelling circumstances in which to impose reasonable restrictions on the timing and scope of email discovery.

The court also addressed the notion that the model order would help only in NPE cases or cases involving asymmetrical ediscovery. It observed that the model order could have double the benefit in competitor cases. If using the model order to relieve the burden on the producing party in an NPE case was a good thing, then using it in a suit between competitors benefit both sides and be twice as good.

Puiszis authors feature article on DRI Today about model orders governing electronic discovery

Hinshaw’s Steve Puiszis has written a feature article on DRI Today titled Groundbreaking Model Ediscovery Order In Patent Cases Is Announced. Puiszis observes that:

The model ediscovery order for patent cases is groundbreaking. Just as the federal discovery rules presumptively limit parties to ten depositions, the model order presumptively limits the number of custodians from whom email can be sought. Its cost-shifting provisions will require parties to carefully consider the discovery they seek. It should reduce discovery costs and limit the gamesmanship that occurs with ediscovery. Too frequently, we find parties serving overbroad discovery requests or engaging in discovery about discovery, where the ultimate end game is not getting to the merits of a lawsuit, but rather to obtain discovery sanctions or force a settlement to avoid the cost of ediscovery. The model order will help parties address the merits of a claim sooner and achieve a quicker, less costly resolution. Many have puzzled over why jury trials are disappearing in federal courts. A major contributor is the cost of discovery. Limiting excessive ediscovery costs can only help civil jury trials flourish in our federal court system.

Read the full text of the article here.