With his recently issued Model Order, Federal Chief Judge Randall Rader has set off a firestorm of talk surrounding e-discovery rule changes and efforts by the courts to minimize the costs and burdens of e-discovery. Judge Rader's proposals also highlight some of the specific challenges associated with conducting e-discovery in patent litigation. Here are some general characteristics of patent litigation and why they present unique e-discovery hurdles:
Large Volumes of ESI:
Patent cases usually involve large volumes of electronically stored information (ESI). For starters, the process of obtaining a patent requires companies to produce and maintain large amounts of data. Additionally, discoverable ESI related to a patent may stretch back many years for three primary reasons:
- There is a long product history
- The patent has been subject to previous lawsuits
- There is a large amount of prior art associated with it.
ESI associated with a patent case can derive from several areas within a particular company. In many instances, lawyers must not only sift through the dense technical documentation generated by a company's engineering or manufacturing team, but also review material produced by the sales and marketing divisions. Not only does this contribute to the amount of ESI that must be accounted for, it forces legal teams to familiarize themselves with the jargon used by each work sector. Failing to account for these differences can lead to potentially responsive ESI slipping through the cracks.
Unique Privilege Issues:
In patent cases, one of the many unique privilege issues is the question of what is considered protected work product. For example, there usually exists a large number of electronic communications between a company and outside attorneys in pre-licensing phases of a patent's lifecycle. This ESI can be highly responsive in litigation. The courts stipulate that company communications are privileged under the condition that they are provided to an attorney solely for the purpose of obtaining legal advice and legal services. However, communications concerning business matters related to a patent are not protected. Determining where legal advice ends and business advice begins can be a tricky gray area for a company to navigate.
Ambiguous Preservation Triggers:
The question of when the obligation to preserve is triggered is one of the most vexing issues in e-discovery. This can be especially true in patent litigation. According to the FRCP, the duty to preserve is triggered when litigation is reasonably foreseeable. There are obvious trigger events – complaints, summons, notice of investigation – but in patent litigation the trigger events can be unclear since patents are so frequently challenged and so fervently protected. Does the filing for the patent, or the issuance of the patent represent a trigger point? Can a company wait until someone challenges for infringement? You won't find definitive answers from the courts. Consequently, it's important for attorneys to exercise sound judgment and keep in mind that preservation obligations do not necessarily require that litigation be imminent or even probable.
Local Patent Rules:
Like all civil matters, patent litigation is governed by the Federal Rules of Civil Procedure (FRCP). However, some jurisdictions have adopted specific rules regarding patent litigation that have significant e-discovery implications. For example, the Northern District of California adopted a set of local rules specifically for patent cases in 2000, which were subsequently revised in 2008. Among other things, the rules established a schedule for an early sequence of disclosures of basic patent litigation contentions and claim construction positions and for a claim construction briefing and hearing following the disclosures. Numerous other districts have adopted variations of California's patent rules, including the Eastern, Southern, and Northern Districts of Texas, the Northern District of Georgia, the Western District of Pennsylvania, the Western District of Washington, and the District of New Jersey. Lawyers must be attentive to these local rules and consider how they stand to impact the e-discovery process.
This article merely scratches the surface of the many e-discovery intricacies that pervade patent litigation. This topic will be discussed in far more detail during Exterro's upcoming webcast, titled Navigating the Complexities of E-Discovery in Patent Litigation, on Thursday, December 8 at 11am PT/2pm ET To learn more and register, click here.