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Order Regarding Ediscovery in Patent Cases Issued by Judge Swain

Endeavor Energy, Inc., v. Consolidated Edison Solutions, Inc.

Case Number: 1:13-cv-06528-LTS (Dkt. 21)

Judge Swain issued an order concerning ESI in a patent case. Her order included the following provision:

  1. Cost-shifting:
    1. "Costs will be shifted for disproportionate ESI production requests pursuant to Federal Rule of Civil Procedure 26."
    2. "[A] party’s nonresponsive or dilatory discovery tactics will be cost-shifting considerations."
    3. "A party’s meaningful compliance with this Order and efforts to promote efficiency and reduce costs will be considered in cost-shifting determinations."

  2. Metadata:
    1. "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."

  3. Email:
    1. "General ESI production requests under Federal Rules of Civil Procedure 34 and 45 shall not include email or other forms of electronic correspondence. To obtain email parties must propound specific email production requests."
    2. "Email production requests shall only be propounded for specific issues, rather than general discovery of a product or business."
    3. "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, and the relevant finances."
    4. "Email production requests shall identify the custodian, search terms, and time frame."
    5. "The parties shall cooperate to identify the proper custodians, proper search terms and proper timeframe."
    6. "Each requesting party shall limit its email production requests to a total of fifteen 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."
    7. "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 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."

  4. Attorney-client privilege/work product doctrine:
    1. "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."
    2. "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."

Emphasis added.

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