On March 2, the Eastern District of Texas introduced on its website a Model Order Regarding E-Discovery in Patent Cases along with amendments to its local rules.

The purpose of the order is to streamline electronically stored information ("ESI") production in order to promote "'just, speedy, and inexpensive determination'" of actions.

A working group of the Local Rules Advisory Committee examined Federal Circuit Chief Judge Rader's Model Order Regarding E-Discovery in Patent Cases ("Model Order") to determine whether such an order would be useful to those practicing in the Eastern District of Texas.

Chief Judge Rader had presented the Model Order to the Texas Eastern Bench Bar Conference in September 2011. Although based on Chief Judge Rader's Model Order, the model order proposed by the working group has a number of distinctions, all of which can be found in Appendix P to the local rules.

Most notably, the district court's version of the model order:

  • Provides basic protocols for ESI production, thereby addressing common issues arising in e-discovery (new paragraph 5);
  • Deletes the attempt to focus email discovery on specific issues (former paragraph 7);
  • Expands the phasing of email discovery by requiring a listing of likely email custodians and an identification of the fifteen most relevant of those custodians in view of the pleaded claims and defenses, infringement contentions, and invalidity contentions (former paragraph 8);
  • Increases the Model Order's limit of five email custodians and five search terms to eight custodians and ten search terms, absent agreement of the parties or Court Order (former paragraphs 10 and 11); and
  • Clarifies that the model order does not affect the parties' broader discovery obligations under the federal or local rules (new paragraph 12).

    Time will tell as to whether the district court's version of the model order will be effective in reducing discovery costs in patent cases.

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