September 2011 – Electronic Discovery Law

E-Discovery Model Order Now Available for Patent Cases

Sep 29 2011

Please Note: Since the date of the original post, the Model Order has been removed from the Federal Circuit’s website. The following statement now appears on the web page of the Advisory Council for the United States Court of Appeals for the Federal Circuit:

The Advisory Council published model orders concerning e-discovery and limitations on claims and prior art, and posted a disclaimer that the Court did not approve the model orders. To avoid the risk of any misperception that the Court has endorsed or taken any position on the model orders through the Advisory Council, or otherwise, the Advisory Council confirms that it does not sponsor or endorse orders.

The above statement also provides a link to further explanation, which states in full:

Model orders concerning e-discovery and limitations on claims and prior art were posted on the court’s website. Those orders have now been removed since the court has not sponsored or endorsed the orders. In light of the court’s determination, the advisory council should not be viewed as having sponsored or endorsed these orders on behalf of the court.

A link to the Advisory Council’s web page containing the above statements is available, here.

During his speech at the E.D. Texas Judicial Conference on Tuesday, Chief Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit introduced the new Model Order Regarding E-Discovery in Patent Cases. Per Chief Judge Rader, the goal of the model order is to “streamline e-discovery, particularly email production, and require litigants to focus on the proper purpose of discovery—the gathering of material information—rather than on unlimited fishing expeditions.”

The model order, which contains 14 specific provisions, addresses a myriad of topics including cost shifting, metadata, and the treatment of privileged information (e.g., inadvertent production does not result in waiver). As indicated, however, the majority of the provisions address the discovery of email. For example, the model order provides that “[g]eneral ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall not include email or other forms of electronic correspondence (collectively ‘email’)” and that “[t]o obtain email, parties must propound specific email production requests.” Moreover, those requests “shall only be propounded for specific issues, rather than general discovery of a product or business.” The model order further provides that email production “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.” Also within the model order is a limitation on the number of custodians per producing party from which email may be requested (5) and on the number of search terms “per custodian per party” (5), although the parties may jointly agree to modify those limits.

A copy of Chief Judge Rader’s comments at the Judicial Conference is available here.

A full copy of the [Model] Order Regarding E-Discovery in Patent Cases is available here.

Now Available: The Sedona Conference® Cooperation Proclamation: Resources for the Judiciary (Public Comment Version)

Sep 28 2011

Last month The Sedona Conference made available a public comment version of its newest publication, The Sedona Conference® Cooperation Proclamation: Resources for the Judiciary (“The Resources”). The Resources “are intended to assemble and promote a variety of proven judicial management tools to help parties develop and execute appropriate, cost-effective, cooperative discovery plans; avoid unnecessary discovery disputes; and resolve discovery disputes that may arise in a fair and expeditious manner.” The publication, a wealth of information in itself, is part of a larger effort by The Sedona Conference® to create an “interactive web site for judges to view, comment on, and contribute to over time.” The Resources will:

Court Orders Government to Reproduce ESI, Discusses Need for Criminal Rules Addressing Electronic Discovery

Sep 21 2011

United States v. Briggs, No. 10CR184S, 2011 WL 4017886 (W.D.N.Y. Sept. 8, 2011)

Defendants were charged with several counts related to the distribution of cocaine. In its disclosures, the Government produced thousands of pages of documents as well as audio recordings, none of which were text searchable. Defendants sought reproduction. Noting the lack of relevant criminal rules and discussing the requirements of Fed. R. Civ. P. 34, the court relied upon its inherent authority to order reproduction in native format or in a PDF format “suitable for searching.”

Court Denies Motion to Exclude Inadvertently Produced Email, Rejects Argument that 26(b)(5)(B) Request for the Email’s Return Satisfied FRE 502(b)(3) Obligation

Sep 15 2011

Williams v. District of Columbia, 806 F. Supp. 2d (D.D.C. 2011)

In this case, the court denied the defendant’s motion to exclude an inadvertently produced email where the defendant failed to satisfy the burden of establishing that reasonable steps were taken to prevent disclosure and where the defendant failed to promptly take reasonable steps to rectify the error. In so holding, the court rejected the defendant’s argument that its actions pursuant to Rule 26(b)(5)(B) (i.e. sending a written request for the return of the email) were sufficient to discharge its obligations under FRE 502(b)(3).

Special Master Considers Whether Attachments to Emails Must be Produced

Sep 07 2011

Abu Dhabi Commercial Bank v. Morgan Stanley & Co, Inc., No. 08 Civ. 7508(SAS), 2011 WL 3738979 (S.D.N.Y. Aug. 18, 2011)

In this case, the Special Master considered the question of whether, under the particular circumstances of this case, emails and their attachments should be considered singular or separate entities and thus, whether they must be produced together. While no definitive answer emerged, the Special Master’s consideration of the issues and resulting recommendation are illuminating, and were ultimately adopted by District Court Judge Shira Scheindlin.

Court Orders Defendant to Re-Post Facebook Profile Picture Showing Infringing Trade Dress to Allow Plaintiff an Opportunity to Print Chosen Posts

Sep 01 2011

Katiroll Co., Inc. v. Kati Roll & Platters, Inc., No. 10-3620 (GEB), 2011 WL 3583408 (D.N.J. Aug. 3, 2011)

In this trademark infringement case, Plaintiff sought sanctions for defendants’ alleged spoliation of several categories of evidence, including the contents of the individual defendant’s Facebook page. Specifically, plaintiff sought sanctions for the defendant’s failure to preserve his Facebook pages in their “original state” i.e., before they were taken down, and because he changed the Facebook profile picture (which had previously displayed the infringing trade dress at issue) without preserving the prior image. The court held that while the spoliation was unintentional, it was nonetheless “somewhat prejudicial” and ordered the defendant to change the picture back for a brief time, to allow plaintiff to print whatever posts it found relevant.

Archive - September 2011