September 22, 2023

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 may very well be notably impactful for patent circumstances, which steadily contain intensive 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 purpose for refusing to adjust to an in any other case legitimate discovery request or disclosure requirement.  A celebration usually 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. Word – I exploit 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).  This can probably embody some details about the contents of the privilege log; method and timing of the change; and so forth.  Equally, the change to Rule 16 make dialogue of this plan an elective side of the Decide’s 16(b) scheduling order.

Patent circumstances typically contain the assertion of attorney-client privilege and work product safety over giant volumes of technical, monetary, and authorized paperwork. At occasions, litigation between rivals facilities on extremely confidential company data that events typically search to guard as privileged.  Producing privilege logs describing all of those paperwork could be extraordinarily burdensome and dear.  The modification encourages events to agree upfront on environment friendly methods to method this job, comparable to via categorical designations or date ranges quite than document-by-document listings.

The proposed modification to Rule 16 permits the court docket to incorporate provisions about privilege points in its scheduling and case administration orders. With an early understanding of the amount and kind 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 circumstances, the place objections typically 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 enable 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 sort 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 symbolize a step in the proper route. Patent litigators needs to be ready to have detailed discussions about privilege throughout the Rule 26(f) convention and search early steering from the court docket.

The Rule 16/26 proposals start on web page 120 of the next PDF doc launched by the Judicial Heart: