Jan. / Feb. 2016
IP Litigator
Authored by Jason E. Stach and Jeff T. Watson
On December 1, 2015, with Congress’s consent the Supreme Court amended the Federal Rules of Civil Procedure (FRCP). [Memorandum from Hon. John G. Roberts to Hon. John A. Boehner at 3 (Apr. 29, 2015).] The amendments include changes to Rules 1, 4, 16, 26, 30, 31, 33, 34, 37, 55, and 84. [Proposed Amendments to the Federal Rules of Civil Procedure, Attachment to Memorandum from Hon. John G. Roberts to Hon. John A. Boehner (Apr. 29, 2015).] Many changes have a goal of encouraging parties and judges to streamline discovery and remove uncertainty when appropriate. For example, amended Rule 34 now expressly requires a party to state "with specificity the grounds for objecting" to a document request, and that "[a]n objection must state whether any responsive materials are being withheld on the basis of that objection." [Id. at 21-23.]
According to the Advisory Committee that shepherded the amendments, these changes to Rule 34 are "aimed at reducing the potential to impose unreasonable burdens by objections to requests to produce." This theme of reducing burden and uncertainty flows throughout the amendments, and the changes to the scope of discovery in Rule 26 are among the most discussed in the entire amendment package.
Under amended Rule 26(b)(1), information is discoverable if it is relevant to any party’s claim or defense and proportional to the needs of the case, with several proportionality factors now stated in the rule. [Id. at 12.] The amendments are shown below, with added material indicated in underlining and removed material indicated in brackets:
Unless otherwise limited by court order, the scope of discovery is as follows: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit. Information within this scope of discovery need not be admissible in evidence to be discoverable. [including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter. For good cause, the court may order discovery of any matter relevant to the subject matter involved in the action. Relevant information need not be admissible at the trial if the discovery appears reasonably calculated to lead to the discovery of admissible evidence. All discovery is subject to the limitations imposed by Rule 26(b)(2)(C).] [Id. at 10-11.]
Despite all the press about the significance of the proportionality amendments, these proportionality factors are not new. Rather, most of the factors were added to Rule 26(b)(1) in 1983. [Memorandum from Hon. David G. Campbell to Hon. Jeffrey Sutton at 7 (June 14, 2014).] They were later moved to Rule 26(b)(2)(C) in 1993 as part of dividing Section (b)(1). [Id.] The Advisory Committee recently indicated that its "purpose in returning the proportionality factors to Rule 26(b)(1) is to make them an explicit component of the scope of discovery, requiring parties and courts alike to consider them when pursuing discovery and resolving discovery disputes." [Id. at 8.]
Because the proportionality factors are not new, it is unclear whether the amendments will result in any change in practice. For example, before the 2015 amendments to Rule 26, it was common for parties to challenge discovery requests on the ground that they were unduly burdensome. Although this terminology differs from proportionality, the ultimate inquiry was the same—given the needs of the case and the relative burdens on the parties, is this discovery request more burdensome than warranted?
To successfully oppose a request based on burden, the opposing party often was required to provide a "specific showing, usually made by affidavit, of why the demand is unreasonably burdensome." [McFadden v. Ballard, Spahr, Andrews, & Ingersoll, LLP, 243 F.R.D. 1, 11 (D.D.C.2007).] Several courts have characterized this showing as a requirement of "every … member of the federal judiciary who has considered the question of burdensomeness." [Id.; see also Caldwell v. Center for Corr. Health & Policy Studies, Inc., 228 F.R.D. 40, 44 (D.D.C. 2005) ("I, like all members of the federal judiciary, have concluded that '[a]n objection must show specifically how an interrogatory is overly broad, burdensome or oppressive, by submitting affidavits or offering evidence which reveals the nature of the burden.'" (citations omitted)).] To provide this showing, a party may need to explain "the nature of the burden in terms of time, money, and procedure required" to comply with a discovery request. [Moss v. Blue Cross and Blue Shield of Kansas, Inc., 241 F.R.D. 683, 689 (D. Kan. 2007).] The explanation may include, for example, "identify[ing] how much time it would take to comply, the number of sources [the responding party] would have to contact to ascertain the information, [and] the number of documents that are potentially responsive to the request." [In re Spoonemore, 370 B.R. 833, 843 (D. Kan. 2007).] If a responding party did not provide adequate proof of the burden to comply with the request, the court often would enforce the discovery request and reject the undue burden objection.
Both the prior language of Rule 26 and case law demonstrate that proportionality has long been a key component for evaluating the reasonableness of discovery requests. So what effect will the 2015 proportionality amendments to Rule 26 have on discovery? Some think they will do no more than change how the parties talk about the issues with each other and with the court. "Undue burden" may simply transform to "not proportional to the needs of the case," without causing any substantive change. Others believe that judges will take the renewed focus on proportionality as license to deny or narrow discovery requests that otherwise would have been permissible under the old rule.
Regardless of whether the change signals a substantive shift, some think the change will shift the burden of proving proportionality to the requesting party, at least in part. Under the old rule, many courts placed the burden of proving undue burden on the receiving party. The Advisory Committee anticipated the question about burden shifting, and it suggested that the burden is on the parties and the court to collectively resolve proportionality issues:
Restoring the proportionality calculation to Rule 26(b)(1) does not change the existing responsibilities of the court and the parties to consider proportionality, and the change does not place on the party seeking discovery the burden of addressing all proportionality considerations.
Nor is the change intended to permit the opposing party to refuse discovery simply by making a boilerplate objection that it is not proportional. The parties and the court have a collective responsibility to consider the proportionality of all discovery and consider it in resolving discovery disputes. [Attachment to Memorandum from Hon. John D. Bates to Hon. John G. Roberts at 19 (Sept. 26, 2014).]
Although the Advisory Committee frames its discussion as not changing any pre-existing burdens, some may see the collective burden they propose (as opposed to placing the burden on the receiving party) as being a change in the law. It remains to be seen how courts will treat the issue.
The recent attention given to the amendments is likely to make parties more cognizant of the proper scope of discovery when serving and responding to discovery requests. In the coming months, as courts begin to address discovery disputes under the amended Rules, we will find out just how great an effect the amendments will have on litigation.
Reprinted with permission from the IP Litigator, published by Wolters Kluwer. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
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