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.
