ARRIVALSTAR S.A. et al v. USA
Filing
26
PUBLISHED ORDER: Amended E-Discovery Order re: 22 E-Discovery Order. Signed by Judge Francis M. Allegra. (si) Copy to parties.
In the United States Court of Federal Claims
No. 11-784C
(Filed: August 20, 2012)
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ARRIVALSTAR S.A. and
MELVINO TECHNOLOGIES LIMITED,
Plaintiffs,
v.
THE UNITED STATES,
Defendant.
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Patent case; E-discovery management order;
Timing of e-discovery; Presumptive limits
on email productions for custodians and
searches; Clawback provisions under Fed. R.
Evid. 502; Provisions dealing with assertion
of privilege; Format for production.
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AMENDED ORDER
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Francis J. Gorman, Gorman & Williams, Baltimore, MD, for plaintiffs.
Scott David Bolden, Civil Division, United States Department of Justice, Washington,
D.C., with whom was Acting Assistant Attorney General Stuart F. Delery, for defendant.
ALLEGRA, Judge:
On July 17, 2012, the court issued this order concerning the management of electronic
discovery (e-discovery). The parties have subsequently recommended changes to the order,
which have been incorporated herein. 1 Accordingly, it is hereby ORDERED as follows:
1
The order contains some of, but not all, the provisions from the Model Order drafted
by the E-Discovery Committee of the Federal Circuit Advisory Council. See
http://www.cafc.uscourts.gov/images/stories/the-court/Ediscovery_Model_Order.pdf. The court
also considered the Model Order drafted by the United States District Court for the Eastern
District of Texas on this subject, see http://www.txed.uscourts.gov/page1.shtmil?location=rules,
as well as recent commentary on this subject, see Daniel Garrie, “The E-Discovery Dance for
Patents: Changing the Tune,” http://www.law360.com/articles/350842/the-e-discovery-dancefor-patents-changing-the-tune (as viewed on July 17, 2012).
1.
This Order supplements this court’s discovery rules.
2.
Generally, the costs of discovery shall be borne by each party, subject to
the provisions of RCFC 26(b)(2)(B) and 37.
3.
Production requests under RCFC 34 and 45 involving electronically stored
information (ESI) shall not include metadata absent a showing of good
cause (e.g., that questions exist concerning the authenticity or authorship
of email).
4.
Email production request shall only be propounded for specific issues,
rather than general discovery of a product or business. Subject to
paragraph 3, the production of email shall not include metadata so long as
the following information fields are otherwise apparent: date sent, to,
from, cc, and any attached filed(s).
5.
Email production requests shall be phased to occur after the parties have
exchanged initial disclosures and basic documentation about the patents,
the prior art, the accused instrumentalities, the relevant finances, as well as
the technology systems involved with email that is reasonably anticipated
to be relevant. 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.
6.
Email production requests shall identify the custodian, search terms, and
time frame. The parties shall cooperate to identify the proper custodians,
proper search terms, and time frame.
7.
Each requesting party shall limit its email production requests to a total of
eight custodians per producing party. The parties may jointly agree to
modify this limit without the court’s leave. The court shall consider
contested requests for additional custodians, upon showing a distinct need
based on the size, complexity, and issues of this specific case.
8.
Each requesting party shall limit its email production requests to a total of
ten search terms per custodian per party. The parties may jointly agree to
modify this limit without the court’s leave. The court shall consider
contested requests for additional search terms per custodian, upon showing
a distinct need based on the size, complexity, and issues of this 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
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of multiple words or phrases (e.g., “computer” and “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.
9.
Before seeking to modify the limits specified in paragraphs 7 or 8, the
parties are encouraged to engage in sampling under RCFC 26(b) and
34(a)(1)(A).
10.
Pursuant to Fed. R. Evid. 502, the production of documents and data
pursuant to this Order shall not result in the waiver of the attorney-client
privilege or work-production protection as to those documents and data.
Also, the production of privileged or protected documents or data under
this Order shall not result in the waiver of the attorney-client privilege or
work-product protection as to those documents and data in any other
federal or state proceeding.
11.
If the producing party determines that it has produced a document or data
to which it wishes to assert a claim of privilege or protection, the counsel
for the producing party shall notify the recipient promptly of its claim. As
part of the notification, the producing party’s counsel shall identify, by
Bates number(s), the document(s) as to which the producing party is
asserting a claim of privilege or protection.
12.
The recipient shall notify the producing party’s counsel upon
identification of any document(s) or data which appears to be potentially
privileged or protected. Such notification shall not waive the recipient’s
ability to challenge any assertion of privilege or protection made by the
producing party as to the identified document(s). As part of the
notification, the recipient shall identify, by Bates Number(s), the
document(s) or data at issue. The recipient shall segregate the specified
document(s) or data, as well as any copies thereof, from the other
materials, and the recipient shall not use the information in the potentially
privileged or protected document(s) or date, except as provided by RCFC
26(b)(5)(B), for a period of 14 days after the date on which the recipient
notifies the producing party’s counsel. Within the 14-day period, or any
other period of time agreed to by the parties, the producing party shall
determine whether it will assert a claim of privilege or protection as to the
identified document(s), and its counsel shall notify the recipient of its
determination.
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13.
Upon receiving notice of a claim of privilege or protection by the
producing party regarding a produced document or data, the recipient shall
segregate, with promptness and in accordance with RCFC 26(b)(5)(B), the
specified document or data, as well as any copies thereof, and the recipient
shall not use the information in the specified document or data, except as
provided by RCFC 26(b)(5)(B), until after the claim is resolved. If the
court upholds – or if the recipient does not challenge – the producing
party’s claim or privilege as to the produced document or data, the
recipient shall return or dispose of the specified document or date, as well
as any copies thereof.
14.
The parties agree to exchange ESI in accordance with the following
provisions. All ESI will be produced either in their native file format or in
PDF or TIFF format according to the preference of the producing party
except that in the case of ESI for which the native file format is Microsoft
Office Excel or other spreadsheet software (e.g., Lotus 123 or Quattro
Pro), such ESI shall be produced in its native file format. In producing
ESI PDF or TIFF format, however, the producing party shall not remove
or reduce any word searching capabilities present in the underlying ESI’s
native file format. The parties may, by agreement, modify the formats
prescribed by this paragraph.
15.
This Order may be modified by the court for good cause. The court will
be inclined to grant any modification jointly proposed by the parties.
IT IS SO ORDERED.
s/ Francis M. Allegra
Francis M. Allegra
Judge
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