Apple Inc. v. Samsung Electronics Co. Ltd. et al

Filing 987

Administrative Motion to File Under Seal filed by Samsung Electronics America, Inc.(a New York corporation), Samsung Electronics Co. Ltd., Samsung Telecommunications America, LLC(a Delaware limited liability company). (Attachments: #1 Proposed Order Granting Motion to Seal, #2 Declaration of Daniel Shim in Support of Motion to Seal, #3 Samsung's Opposition to Apple's Motion for Adverse Inference Jury Instructions, #4 Declaration of Thomas Watson, #5 Exhibit 1 to Watson, #6 Exhibit 2 to Watson, #7 Exhibit 3 to Watson, #8 Exhibit 4 to Watson, #9 Exhibit 5 to Watson, #10 Exhibit 6 to Watson, #11 Exhibit 7 to Watson, #12 Exhibit 8 to Watson, #13 Exhibit 9 to Watson, #14 Exhibit 10 to Watson, #15 Exhibit 11 to Watson, #16 Exhibit 12 to Watson, #17 Exhibit 13 to Watson, #18 Exhibit 14 to Watson, #19 Exhibit 15 to Watson, #20 Exhibit 16 to Watson, #21 Exhibit 17 to Watson, #22 Exhibit 18 to Watson, #23 Exhibit 19 to Watson, #24 Exhibit 20 to Watson, #25 Exhibit 21 to Watson, #26 Exhibit 22 to Watson, #27 Exhibit 23 to Watson, #28 Exhibit 24 to Watson, #29 Exhibit 25 to Watson, #30 Exhibit 26 to Watson, #31 Exhibit 27 to Watson, #32 Exhibit 28 to Watson, #33 Exhibit 29 to Watson, #34 Exhibit 30 to Watson, #35 Exhibit 31 to Watson, #36 Exhibit 32 to Watson, #37 Exhibit 33 to Watson, #38 Declaration of Sara Jenkins, #39 Declaration of Alex Binder, #40 Exhibit 1 to Binder, #41 Exhibit 2 to Binder, #42 Exhibit 3 to Binder, #43 Exhibit 4 to Binder, #44 Declaration of Hankil Kang, #45 Declaration of Don Joo Lee, #46 Declaration of Giho Ro, #47 Declaration of Han-Yeol Ryu, #48 Declaration of Heontae Son, #49 Declaration of Ioi Lam, #50 Declaration of Jong Dae Park, #51 Declaration of Joo Hyuk Kang, #52 Declaration of Kang Hyun Lee, #53 Declaration of Min Cheol Shin, #54 Declaration of Minhyouk Lee, #55 Declaration of Nara Cho, #56 Declaration of Se-Hyun Cho, #57 Declaration of Sungsik Lee, #58 Declaration of Won Pyo Hong, #59 Declaration of Wooup Kwon, #60 Declaration of Young-jo Lim, #61 Declaration of YoungSoon Lee, #62 Declaration of Kyu Hyuk Lee, #63 Declaration of Michael Finnegan, #64 Declaration of Byungil Kim, #65 Declaration of M. James Daley, #66 Declaration of Raymond Warren, #67 Proposed Order Denying Apple's Motion for Adverse Inference Jury Instructions)(Maroulis, Victoria) (Filed on 5/29/2012)

Watson Declaration
EXHIBIT 3

AN E-DISCOVERY MODEL ORDER
INTRODUCTION
Since becoming a staple of American civil litigation, e-discovery has been
the subject of extensive review, study, and commentary. See The Sedona
Principles: Best Practices, Recommendations & Principles for Addressing
Electronic Document Production (2d ed. June 2007). In view of the growing
concern about e-discovery, the Federal Rules of Civil Procedure were amended in
2006 to more fully address e-discovery. Likewise, several district courts have
adopted local e-discovery rules.1
Despite these amendments, e-discovery continues to present a broad
spectrum of challenges, such as preservation obligations, production format, and
the disproportionate cost of e-discovery.2 Patent cases, in particular, tend to suffer
from disproportionally high discovery expenses. See Emery G. Lee III & Thomas
E. Willging, Litigation Costs in Civil Cases: Multivariate Analysis 8 (Fed. Judicial
Ctr. 2010) (“Intellectual Property cases had costs almost 62% higher, all else equal,
than the baseline ‘Other’ category.”); see also Thomas E. Willging et al.,
Discovery and Disclosure Practice, Problems, and Proposals for Change: A Case1

District Courts in Delaware, Kansas and Maryland have adopted e-discovery local rules.
Seventh Circuit has adopted an e-discovery pilot program.
2

The

The following are the main cost areas for e-discovery:

Collection: Forensically sound (e.g., preserving the document date) collection can require a
trained specialist. Costs will include vendor fees and/or licensing fees, and media related
charges. Inactive data requires restoration and software licensing fees.
Processing: Requires use of licensed assessment or review tools (more than 1 tool are often
used for this process). Expenses will include data and text extraction, de-duplication, imaging
fees, project management time and potential hosting fees. Frequently includes narrowing or
broadening the scope of collection based on results.
Review: Requires continued hosting and licensing fees. Project management time is
necessary for database setup and management, additional keyword filtering/assessment and
searching. If human review is involved, this is the largest area of cost.
Production: Requires any additional data and image conversion, text extraction and/or
appropriate language OCR generation. Tech time will include dealing with problematic files
(e.g., Excel). Also requires endorsement and control numbering. Costs will also be incurred
for project management/tech time and media related charges.
Post Production: Project management and load time for importing productions into
production review tool or index. Additional costs for associating native files to records.

Based National Survey of Counsel in Closed Federal Civil Cases 38-39 (Fed.
Judicial Ctr. 1997) (finding that patent cases “stood out for their high discovery
expenses”). Such expenses are compounded when attorneys use discovery tools
as tactical weapons, which hinders the “just, speedy, and inexpensive
determination of every action and proceeding.” Fed. R. Civ. P. 1.
In recent years, the exponential growth of and reliance on electronic
documents and communications has exacerbated such discovery abuses.
Excessive e-discovery, including disproportionate, overbroad email production
requests, carry staggering time and production costs that have a debilitating effect
on litigation. Routine requests seeking all categories of Electronically Stored
Information often result in mass productions of marginally relevant and cumulative
documents. Generally, the production burden of these expansive requests
outweighs the minimal benefits of such broad disclosure.
Most discovery in patent litigation centers on what the patent states, how the
accused products work, what the prior art discloses, and the proper calculation of
damages. These topics are normally the most consequential in patent cases.
Thus, far reaching e-discovery, such as mass email searches, is often tangential to
adjudicating these issues.
As technology and knowledge play an increasingly important role in our
economy, the courts must not become an intolerably expensive way to resolve
patent disputes. Specifically, litigation costs should not be permitted to unduly
interfere with the availability of the court to those who seek to vindicate their
patent rights—the enforcement of such rights is both an obligation of the legal
system and important to innovation. Likewise, disproportionate expense should
not be permitted to force those accused of infringement to acquiesce to nonmeritorious claims. This only serves as an unhealthy tax on legitimate commerce.
Fortunately, district courts have inherent power to control their dockets to
further “economy of time and effort for itself, for counsel and for litigants.”
Landis v. North Am. Co., 299 U.S. 248, 254 (1936). Our objective is thus narrow,
but important. The accompanying Model Order Limiting E-Discovery in Patent
Cases is intended to be a helpful starting point for district courts to use in requiring
the responsible, targeted use of e-discovery in patent cases. The goal of this
Model Order is to promote economic and judicial efficiency by streamlining ediscovery, particularly email production, and requiring litigants to focus on the
proper purpose of discovery—the gathering of material information—rather than
permitting unlimited fishing expeditions. It is further intended to encourage

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discussion and public commentary by judges, litigants, and other interested parties
regarding e-discovery problems and potential solutions.
DISCUSSION OF THE MODEL ORDER
Hard-worn experience in patent cases and recent commentary teach that
efforts to identify comprehensively the discovery issues or to produce all
“relevant” documents at once at the outset of the case can result in the vastly
overbroad production of e-discovery. Indeed, the practice of gathering huge
amounts of information at the front of a case and running broad key searches as the
issues emerge has come under increasing question. The recently published
Judges’ Guide to Cost-Effective E-Discovery critiqued this practice sharply:
Some argue that e-discovery is best accomplished by taking large
amounts of data from clients and then applying keyword or other
searches or filters. While, in some rare cases, this method might be the
only option, it is also apt to be the most expensive. In fact, keyword
searching against large volumes of data to find relevant information is
a challenging, costly, and imperfect process.
Anne Kershaw & Joe Howie, Judges’ Guide to Cost-Effective E-Discovery 4 (Fed.
Judicial Ctr. 2010).
Hence, this Model Order requires a discovery process whereby the parties
exchange core documentation concerning the patent, the accused product, the prior
art, and the finances before making email production requests. Moreover, email
production requests should be focused on a particular issue for which that type of
discovery is warranted.
Much as Federal Rule of Civil Procedure 30
presumptively limits cases to ten depositions and seven hours per deposition,3 this
Model Order presumptively limits the number of custodians and search terms for
all email production requests. However, the parties may jointly agree to modify
these limits or request court modification for good cause.
This is not to say a discovering party should be precluded from obtaining
more e-discovery than agreed upon by the parties or allowed by the court. Rather,
the discovering party shall bear all reasonable costs of discovery that exceeds these
3

Such limits have reformed deposition practice, making it more efficient. See Fed. R. Civ. P.
30(a), 1993 Advisory Committee Notes (explaining that Rule 30 limits the number of depositions
a party may take in order to “to emphasize that counsel have a professional obligation to develop
a mutual cost-effective plan for discovery in the case”).
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limits. This will help ensure that discovery requests are being made with a true
eye on the balance between the value of the discovery and its cost.
A large source of e-discovery cost is the pre-production review of
documents by attorneys or other human reviewers. Even with clawback
provisions, this pre-production review is often undertaken to avoid the disclosure
of privileged or other sensitive documents to adversaries. Accordingly, this
Model Order addresses concerns regarding waiver of attorney-client privilege and
work product protection in order to minimize human pre-production review.
E-Discovery Committee
Chief Judge James Ware (ND Cal)
Judge Virginia Kendall (ND Ill)
Magistrate Judge Chad Everingham (ED Tex)
Chief Judge Randall Rader (Fed. Cir.)
Tina Chappell
Richard “Chip” Lutton
Joe Re
Edward Reines
Steve Susman
John Whealan

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Addendum: Discovery Model Order

Plaintiff,
v.
Defendant.

Case No.

[MODEL] ORDER REGARDING E-DISCOVERY IN PATENT CASES

The Court ORDERS as follows:
1.

This Order supplements all other discovery rules and orders.

It

streamlines Electronically Stored Information (“ESI”) production to promote a “just, speedy, and
inexpensive determination” of this action, as required by Federal Rule of Civil Procedure 1.
2.

This Order may be modified for good cause. The parties shall jointly

submit any proposed modifications within 30 days after the Federal Rule of Civil Procedure 16
conference. If the parties cannot resolve their disagreements regarding these modifications, the
parties shall submit their competing proposals and a summary of their dispute.
3.

Costs will be shifted for disproportionate ESI production requests pursuant

to Federal Rule of Civil Procedure 26. Likewise, a party’s nonresponsive or dilatory discovery
tactics will be cost-shifting considerations.
4.

A party’s meaningful compliance with this Order and efforts to promote

efficiency and reduce costs will be considered in cost-shifting determinations.
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.
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.
7.

Email production requests shall only be propounded for specific issues,

rather than general discovery of a product or business.
8.

Email production requests shall be phased to occur after the parties have

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exchanged initial disclosures and basic documentation about the patents, the prior art, the
accused instrumentalities, and the relevant finances. While this provision does not require the
production of such information, the Court encourages prompt and early production of this
information to promote efficient and economical streamlining of the case.
9.
time frame.

Email production requests shall identify the custodian, search terms, and

The parties shall cooperate to identify the proper custodians, proper search terms

and proper timeframe.
10.

Each requesting party shall limit its email production requests to a total of

five custodians per producing party for all such requests. The parties may jointly agree to
modify this limit without the Court’s leave.

The Court shall consider contested requests for up

to five additional custodians per producing party, upon showing a distinct need based on the size,
complexity, and issues of this specific case. Should a party serve email production requests for
additional custodians beyond the limits agreed to by the parties or granted by the Court pursuant
to this paragraph, the requesting party shall bear all reasonable costs caused by such additional
discovery.
11.

Each requesting party shall limit its email production requests to a total of

five search terms per custodian per party.
without the Court’s leave.

The parties may jointly agree to modify this limit

The Court shall consider contested requests for up to five additional

search terms per custodian, upon showing a distinct need based on the size, complexity, and
issues of this specific case. The search terms shall be narrowly tailored to particular issues.
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

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“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.

Should a party serve email production requests with search terms

beyond the limits agreed to by the parties or granted by the Court pursuant to this paragraph, the
requesting party shall bear all reasonable costs caused by such additional discovery.
12.

The receiving party shall not use ESI that the producing party asserts is

attorney-client privileged or work product protected to challenge the privilege or protection.
13.

Pursuant to Federal Rule of Evidence 502(d), the inadvertent production

of a privileged or work product protected ESI is not a waiver in the pending case or in any other
federal or state proceeding.
14.

The mere production of ESI in a litigation as part of a mass production

shall not itself constitute a waiver for any purpose.

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