Published on:

Judge in Northern District of California Advises Parties That Federal Circuit’s Model Order on E-Discovery Is a Presumptive Starting Point for E-Discovery Orders

Positive Technologies, Inc. (“Positive Technologies”) filed a patent infringement action against Sony Electronics and Amazon, among others. Amazon filed a motion for entry of the Federal Circuit Advisory Council’s Model Order regarding E-Discovery in Patent Cases (the “Model Order”). The Model Order provides for specific limits on e-discovery.

There are several provisions of the Model Order that should be noted in particular:

“General ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall not include metadata absent a showing of good cause. However, fields showing the date and time that the document was sent and received, as well as the complete distribution list, shall generally be included in the production.”

“General ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall not include email or other forms of electronic correspondence (collectively “email”). To obtain email parties must propound specific email production requests.”

“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.”

“Each requesting party shall limit its email production requests to a total of five 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 up to five additional custodians per producing party, upon showing a distinct need based on the size, complexity, and issues of this specific case. 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.”

“Each requesting party shall limit its email production requests to a total of five search terms per custodian per party.”

“The mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.”

Although the court found that the parties had failed to meet and confer appropriately over the Model Order, the court did note that it would consider the Model Order the presumptive starting point: “After reviewing the parties’ briefs and proposed orders regarding e-discovery, the Court finds that the parties have not sufficiently met and conferred regarding the dispute. The parties are ordered to meet and confer in person, or by telephone if an in-person meeting is not feasible, within 14 days of the date of this order. The parties shall make reasonable compromises, and shall endeavor to prepare a stipulated proposed order regarding e-discovery in this case. Amazon is advised that some portions of the model order are obviously inapplicable to this case – for example, that the parties shall jointly submit proposed modifications within 16 days of the Federal Rules of Civil Procedure 16 conference, which has long since passed in this case. Plaintiff is advised that the Court otherwise considers the model order to be a presumptive starting point for this case.”

Positive Technologies, Inc. v. Sony Electronics, Inc., et al., Case No. 11-cv-2226 SI (KAW) (N.D. Cal. Feb. 1, 2013)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or