In October along with proposed revisions to the Local Patent Rules, the Northern District proposed new Local Patent Rules for Electronically Stored Information (“LPR ESI”). The LPR ESI share many commonalities with standing ESI Orders being used in patent cases in districts across the country. Additionally, the proposed LPR ESI is consistent with the existing LPR, which emphasizes avoiding costly disputes, enhancing cooperation and narrowing of cases and discovery.
The following is an analysis of the key provisions of the proposed LPR ESI:
LPR ESI 1.1 (Purpose)
The LPR ESI are designed to further Fed. R. Civ. P. 1 by securing “just, speedy, and inexpensive”, as well as early resolution, of ESI disputes without Court intervention.
LPR ESI 1.2 (Cooperation)
Counsel are required to cooperate in seeking and responding to discovery requests. Failure to cooperate will be considered in cost-shifting determinations.
LPR ESI 1.3 (Discovery Plan)
To further Fed. R. Civ. P. 26(b)(2)(C) ESI requests and responses “should be reasonably targeted, clear, and as specific as practicable.”
LPR ESI 1.4 (Privilege and Waiver)
- A receiving party cannot use ESI claimed to be attorney-client or work product privileged to challenge the privilege.
- Inadvertent production pursuant to FRE 502(d) is not a waiver in the pending case or any other federal or state proceeding.
- “Mere production of ESI in a litigation as part of a mass production shall not itself constitute a waiver for any purpose.”
LPR ESI 2.1 (Duty to Meet and Confer on Discovery and to Identify Disputes for Early Resolution)
- Parties must meet to discuss the discovery process before an initial status conference.
- Unresolvable disputes should be submitted to the Court at the initial status conference or as soon thereafter as possible.
- Before presenting disputes to the court, each party must designate an e-discovery liaison who will participate in meet and confers.
- An e-discovery liaison, whether in-house counsel, outside counsel, a party employee or a third party must: be prepared to participate in e-discovery dispute resolution; be knowledgeable about the party’s e-discovery efforts; and have reasonable access to individuals familiar with the party’s electronic systems and e-discovery generally.
- The Court can modify the LPR ESI for any particular case.
- The parties are to jointly submit any proposed modifications, or statements of their competing proposals, within thirty days of the Fed. R. Civ. P. 16 conference.
- If the Court determines that a counsel or a party is not cooperating or participating in good faith, it can require additional e-discovery discussions prior to commencing discovery or impose sanctions.
LPR ESI 2.2 (Preservation Requests and Orders)
- Preservation requests and orders should not be vague or overbroad. Instead, they should be “reasonable in scope” and within the bounds of Fed. R. Civ. P. 26(b)(2)(C).
- The type of “specific and useful information” that should be included in preservation letters includes: names of parties; factual background of claims and identification of causes of action; names of potential witnesses or individuals anticipated to have “relevant evidence”; and the relevant time period.
- Should a preservation letter recipient choose to respond (there is no requirement to respond), the response should provide “useful and specific” information such as: identifying information that the party is willing to preserve and the steps taken in response to the letter; disagreements with the preservation letter; and preservation issues not raised in the preservation letter.
- Neither preservation letters, nor responses thereto are required by the LPR ESI.
LPR ESI 2.3 (Scope of Preservation)
- Every party and its counsel are responsible for taking “reasonable and proportionate steps” to preserve ESI within their possession, custody or control. What is reasonable and proportionate is a fact-specific inquiry that must be undertaken for each case.
- Discovery regarding preservation and collection of another party cannot be initiated without first conferring with the party from whom discovery is sought regarding the need for discovery, including its relevance to the case, and alternative means for obtaining the information.
- The parties and counsel should attend the initial meet and confer prepared to discuss specific ESI issues, although “every conceivable issue” that may arise in the case need not be addressed at that time.
- The following ESI categories are generally not discoverable and any request to preserve or produce them should be discussed at the initial meet and confer or as soon thereafter as possible:
(1) “deleted,” “slack,” “fragmented,” or “unallocated” data on hard drives;
(2) random access memory (RAM) or other ephemeral data;
(3) on-line access data such as temporary internet files, history, cache, cookies, etc.:
(4) data in metadata fields that are frequently updated automatically, such as last-opened dates;
(5) backup data that is substantially duplicative of data that is more accessible elsewhere; and
(6) other forms of ESI whose preservation requires extraordinary affirmative measures that are not utilized in the ordinary course of business.
- Disputes concerning the scope of preservation should be addressed in a meet and confer and then raised promptly with the Court if they cannot be resolved.
LPR ESI 2.4 (Identification of ESI)
- At the Rule 26(f) conference or soon thereafter, the parties must discuss methodologies for identifying ESI, including without limitation:
- Eliminating duplicative ESI and whether de-duplication will occur within a particular custodian’s ESI or across all custodians.
- Filtering based upon file type, date ranges, search terms or similar parameters.
- Use of keyword searches, mathematical or thesaurus-based topic or concept clustering or other advanced “culling technologies.”
LPR ESI 2.5 (Production Format)
- The parties must confer and make a good faith effort to agree on ESI production format(s) and should raise any disputes promptly.
- Parties must confer regarding whether ESI in databases or database management systems may be produced by querying the database resulting in a report or exportable electronic file for review by the requesting party.
- Meta-data is presumed not to be requested and need not be produced unless a party makes a “special request.”
- ESI or hard copy documents that are not text-searchable need not be made to be searchable.
- The requesting party is responsible for the “incremental cost” of creating its copy of requested information. Parties are encouraged to discuss cost-sharing for optical character recognition (“OCR”) or other “upgrades” of hard copy or other non-text-searchable ESI that may be contemplated by a party.
LPR ESI 2.6 (Email Production Requests)
- General ESI production requests will not include email or other forms of electronic correspondence. Email production requires specific requests.
- Email production will be phased to occur after exchange of initial disclosures and “basic documentation” about the patents, prior art, accused instrumentalities and relevant finances. “Prompt and early” production of such information is encouraged, although not required.
- Email production requests must identify: custodians; search terms and time frames. The parties are to cooperate to identify proper custodians, terms and timeframes.
- Email requests are limited to five custodians per party for all requests. The parties can jointly agree to modify the five custodian limit. Disputed requests for more than five custodians will be considered by the Court based upon the specific case. The requesting party will bear “all reasonable costs” of discovery beyond the limits in this Rule or granted by the Court.
- Search terms will be limited to five per custodian per party. The parties can jointly agree to modify this limit without leave of Court. The Court will consider disputed requests for additional terms based upon the specific case.
- Search terms must be narrowly tailored to particular issues. Indiscriminate terms such as a producing party’s name or product name are inappropriate unless combined with narrowing search criteria to “reduce the risk of overproduction.”
- Conjunctive combinations of multiple words or phrases narrows the search and will be counted as a single term. Disjunctive combinations of words or phrases broadens the search and are counted as separate terms, unless they are variations of the same word.
- Use of narrowing criteria – and, but not, w/x – are encouraged and will be considered in cost shifting determinations.
- The requesting party will bear all costs for email production requests with search terms beyond limits agreed to by the parties or ordered by the Court.