New Modification to FRCP May Assist Streamline Privilege Administration in Patent Instances

by Dennis Crouch

On August 15, 2023, the Judicial Convention Advisory Committee on Civil Guidelines revealed proposed amendments to Guidelines 16 and 26 of the Federal Guidelines of Civil Process. One of many objectives of those amendments is to encourage events to deal with points referring to claims of privilege and work product safety early in litigation. This could possibly be notably impactful for patent instances, which regularly contain in depth disputes over these very points.  The proposal would additionally retitle Rule 16(b) to incorporate each scheduling and case administration (the present model simply focuses on scheduling).

Rule 26(b)(5)(A) focuses on the the process for “claiming privilege” as an cause for refusing to adjust to an in any other case legitimate discovery request or disclosure requirement.  A celebration typically has to:

(i) expressly make a declare of privilege; and

(ii) create a privilege log that describes the character of the factor withheld.

The privilege log will probably be disclosed to the opposite facet and it’s one thing of an artwork to explain the objects with out placing the opposite facet on the path of the protected data. Notice – I take advantage of privilege right here as an overarching time period. The rule applies to objects/data protected by each privilege and work product guidelines.

The proposed modification to Rule 26 requires events to debate and embody of their discovery plan the tactic they’ll use to adjust to Rule 26(b)(5)(A).  It will probably embody some details about the contents of the privilege log; method and timing of the trade; and so forth.  Equally, the change to Rule 16 make dialogue of this plan an elective side of the Choose’s 16(b) scheduling order.

Patent instances usually contain the assertion of attorney-client privilege and work product safety over massive volumes of technical, monetary, and authorized paperwork. At occasions, litigation between rivals facilities on extremely confidential company data that events usually search to guard as privileged.  Producing privilege logs describing all of those paperwork might be extraordinarily burdensome and dear.  The modification encourages events to agree upfront on environment friendly methods to strategy this process, akin to by way of categorical designations or date ranges fairly than document-by-document listings.

The proposed modification to Rule 16 permits the courtroom to incorporate provisions about privilege points in its scheduling and case administration orders. With an early understanding of the amount and sort of doubtless privileged supplies concerned, the decide can construct in procedures for well timed decision of any disputes. For instance, the order may present for rolling productions of privilege logs on a daily schedule.

Getting forward of privilege disputes will probably be particularly helpful in patent instances, the place objections usually come up late in discovery — and key paperwork are sometimes hidden behind that privilege wall. Final-minute disagreements can derail case schedules. An orderly course of set forth within the case administration order will permit privilege points to be handled effectively as they come up, with out disrupting the remainder of the litigation.  To be clear although, the brand new rule is kind of incremental and is topic to substantial abuse by events who search to cover paperwork utilizing weak privilege arguments.

Whereas utility will rely upon the specifics of every case, these amendments signify a step in the suitable route. Patent litigators needs to be ready to have detailed discussions about privilege throughout the Rule 26(f) convention and search early steerage from the courtroom.

The Rule 16/26 proposals start on web page 120 of the next PDF doc launched by the Judicial Heart: https://www.uscourts.gov/sites/default/files/2023_preliminary_draft_final_0.pdf.