The US Court of Appeals for the Federal Circuit recently adopted a model order for patent cases which is disconcerting, to say the least. Typically, model orders cover a large set of circumstances and provide effective guidance to help parties move a case forward effectively and efficiently. This model order does neither and may actually be harmful to the 26(f) process and ESI agreements that are being negotiated now.

The parts of the order that concern me the most are:

6. 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.

One of the main purposes of the 2006 update to the FRCP was to define ESI (Electronically Stored Information) which includes email. Thereby arguments over email could be eliminated: whether they were about specifically identified eDiscovery requests or whether they should be turned over like any other relevant evidence, regardless of whether it is electronic or not. Yet, the model order requires email to be requested in a specific “email production request.” This seems to be a major step backwards.

5. 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.

The model order also calls out metadata specifically (not just that related to email) and says that production requests should not include metadata (unless it is send and receive metadata). This shows a fundamental misunderstanding of ESI, and how it is used in litigation. Metadata exists as part of an electronic document or email. Keeping metadata out of productions is like turning over half a piece of paper without relevant text on it or not turning over the pencil markings on a (paper) memo. Metadata is a crucial part of ESI, even if it isn’t immediately obvious from the face of a document. Moreover, it is the foundation for keyword and other searching techniques.

10. Each requesting party shall limit its email production requests to a total of five custodians per producing party for all such requests…

Limiting an email production request to five custodians demonstrates an arbitrary decision which – more than likely – has little relevance in a case. Every case differs and may involve 5 inventors or a team of 50 inventors. The opposing party generally doesn’t or can’t know who the most relevant and “effective’ custodians without a review of a custodian’s data. Some custodians may have more relevant data than others. Narrowing a search and review strategy to collect and review data from those “priority” custodians is key, and it is key to do this early. Arbitrarily limiting email production requests to 5 people completely misses the point of early case assessment and evaluating the actual data to figure out who are the most relevant custodians.

11. Each requesting party shall limit its email production requests to a total of five search terms per custodian per party… Indiscriminate terms, such as the producing company’s name or its product name, are inappropriate unless combined with narrowing search criteria that sufficiently reduce the risk of overproduction. A conjunctive combination of multiple words or phrases (e.g., “computer” and “system”) narrows the search and shall count as a single search term. A disjunctive combination of multiple words or phrases (e.g., “computer” or “system”) broadens the search, and thus each word or phrase shall count as a separate search term unless they are variants of the same word. Use of narrowing search criteria (e.g., “and,” “but not,” “w/x”) is encouraged to limit the production and shall be considered when determining whether to shift costs for disproportionate discovery…”

Where to start with this provision? There are many disconcerting things here so I will focus on my fundamental concern: the importance of developing a search strategy.  If you have participated in a search strategy session where the objective is to scope a data set for collection or review, there are many, many ways to filter and cull data and there are many, many ways to search for relevant or privileged data. Most of these methods do not involve keyword search AT ALL. The most effective methods for that data set may not even use keyword search at all. I’m not saying that you wouldn’t use keyword search as part of your search strategy, but it certainly isn’t the ONLY method to use. Having a model order suggest a technology and then dictate how to count the searches performed with that technology seems misinformed and fraught with the likelihood of costly motion practice because of discovery abuses.

9. Email production requests shall identify the custodian, search terms, and time frame. The parties shall cooperate to identify the proper custodians, proper search terms and proper timeframe.

What I appreciate about the model order is that parties are required to cooperate with regard to email production requests. The model order misses the point that eDiscovery requires a well thought out search strategy to find the right data, not just run a limited set of 5 keyword searches over a limited set of 5 custodians’ data. A more effective model order would have required cooperation for all ESI requests and not tried to dictate how data should be requested or searched. A search strategy is privileged work product but part of any strategy is cooperation with the requesting party to properly limit the scope of the request and production.

Understanding the Business Process of e-Discovery
In this second of a two-part Carmel Valley e-Discovery Retreat recap, we’ll focus on cooperation and the business process of e-discovery.

Several panels discussed how challenging it is to coordinate the efforts of inside counsel, outside counsel, the e-discovery service provider and the contract review company – not to mention co-counsel. Incentives can be misaligned, communication can be dysfunctional and parties can sometimes be competitive. The key is to define roles very clearly from the outset. Decide who is responsible for what and create a clear communication plan so that each party knows what to expect from each other. In addition, establishing a “partnership” or “repeated game” typically makes for more seamless collaboration. The earlier such a relationship is established, the better.

Once all parties are cooperating, then comes the challenge of treating e-discovery as a business process. Panel Moderator Barry Murphy asked, “Is e-discovery really any different than any other business process?” After all, it involves people, process, technology and data.  Panelists urged corporations and law firms to think in these terms. They advised us to:  use metrics to evaluate success, create check-lists and documentation to support the process, define the appropriate experts and the key technologies to be used, understand the data environment and the unique circumstances of each matter, and align the parties. There were many discussions about the difficulties law firms and corporations face when building such processes internally, and that a logical solution is to use a managed service partner. Panelists from both Quest and Oracle mentioned they have such relationships in place. The Checklist Manifesto by Atul Gawande was an oft-quoted book.

We’re getting ready for Carmel.  It’s a beautiful place to visit and this unique retreat is going to be a great place to network and participate in some interesting discussions.

Join your colleagues and a few of us at the Carmel Valley e-Discovery Retreat in Carmel, CA on July 17-20.

I’ll be there with Troy Dunham, our expert on e-Discovery, along with a few folks from our team.
I’m speaking on July 18 at the “Working Together Effectively” seminar moderated by George Socha (one of the creators of the EDRM model) and will address how a collaborative approach drives efficient and effective process building which leads to dramatically reduced litigation costs, better control and visibility, and defensible results.

Troy is speaking on July 19 at the “From Identification To Production- Managing e-Discovery-A Business Process” seminar. Troy, a licensed California attorney and former practice support administrator for a global law firm, will discuss how an end-to-end, repeatable business process is the key to Corporate America’s success in the daunting world of e-Discovery. He will also discuss upcoming trends, as well as technology and service solutions, and how each will affect the e-Discovery landscape.

Contact us if you want to schedule a time to meet and have coffee.