Category Archives: Patent Law

Chief  Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit  recently gave a speech in which he defined the terms “trolls” and “grasshoppers,” offered a way to  help keep them in check, and introduced a model discovery order for use in  patent cases. We’d like your thoughts on how well the proposed order is apt to  meet its dual purposes of saving costs while allowing adequate discovery. But first,  a few words about trolls, grasshoppers, and the model order.

In his  speech at the Eastern District of Texas Bench and Bar, Chief Judge Rader  defined a troll as a party that attempts to enforce a patent far beyond its  actual value or contribution to the prior art and a grasshopper as an entity that  refuses to license even the strongest patent at even the most reasonable rates.  He suggested shifting attorney fees and costs to trolls and grasshoppers upon  the filing of motions for fees and costs on the basis that the cases were  “exceptional.” See 35 U.S.C. § 285 (“The  court in exceptional cases may award reasonable attorney fees to the prevailing  party.”); see also Eon-Net LP v. Flagstar Bancorp, 2011  WL 3211512 (Fed. Cir. 2011) (holding that one of the factors leading to  awarding of sanctions under 35 U.S.C. § 285 was a history of filing nearly  identical patent suits against a plethora of diverse defendants followed by  settlement demands for amounts at a price that was far lower than cost to  defend the litigation).

Chief  Judge Rader also announced a model e-discovery order for patent litigation that  targeted email discovery in several ways as summarized below.

No  general email discovery. General document requests would not include  email or other forms of electronic correspondence.

Second  phase. Email production requests would be phased to occur after the  parties have exchanged initial disclosures and basic documentation about the  patents, prior art, accused instrumentalities, and relevant finances.

Custodians,  search terms, and time frame. Email production requests would  identify custodians, search terms, and time frame.

Five  custodians, possibly five more; costs. Each requesting party would limit  its email production requests to a total of five custodians per producing party  for all such requests. The parties could jointly agree to modify this limit  without the court’s leave. The court would consider contested requests for up  to five additional custodians per producing party upon showing a distinct need.  Parties seeking email production requests beyond those agreed by the parties or  granted by the court would bear all reasonable costs caused by such discovery (¶  10).

Five  search terms, possibly more; costs. Each email request would be  limited to five search terms per custodian per request with court to consider  five additional terms upon a showing of distinct need. Terms that narrow the  search (“AND”) wouldn’t count nor will terms that are variants of the same word  (¶ 11).

If you  have a patent litigation practice, we’d love to hear from you on how well you  think the terms of the model order will work for your cases. Is imposing  attorney fees and costs on intransigent trolls and grasshoppers workable? Take  just a few minutes and complete the following survey; be sure to click “Done”  at the end. We’ll share the results in a future posting.

In his talk to the Eastern District of  Texas Bench and Bar, Chief Judge Rader mentioned the survey that showed that  less than 1 in 10,000 documents that were produced in discovery ever made it  onto a trial exhibit list, and he cited the Judges’ Guide to Cost-Effective  E-Discovery, which contained the results of  several surveys on cost-effective e-discovery processing techniques and tools.