Co-authored by Dean N. Razavi.
In a patent infringement suit between two competing technology firms, the U.S. District Court for the Northern District of California adopted the “Model Order on E-Discovery in Patent Cases” recently promulgated by a subcommittee of the Advisory Council of the Federal Circuit.
The Model Order provides for discovery in two phases. The first phase is an exchange of “core documentation” regarding the patent, the product, the prior art, and the parties’ finances. The second involves an exchange of e-mails limited to particular issues warranting such discovery and no more than five search terms and five custodians.
The plaintiff opposed application of the Model Order on the ground that the Order was designed to address imbalances in the cost and volume of discovery in a cases brought by a “non-practicing entities” that have very little to produce. Because the plaintiff and the defendant were direct competitors in the industry, those inequities which the Model Order was designed to remedy were not at play.
The court rejected the plaintiff’s argument and issued an order conforming to the Model Order. The court noted that evidence suggested that a mere .0074% of the documents produced in similar cases became exhibits at trial, and that the elimination of those costs was the purpose of the Model Order.
DCG Systems, Inc. v. Checkpoint Technologies, LLC, No. C-11-03792 PSG (N.D. Cal. Nov. 2, 2011).