In the District of Delaware, unless the parties agree otherwise, ESI discovery is guided by the Default Standard for Discovery. The Court published the Default Standard over a decade ago, and at this point quite a bit of case law has developed interpreting its various provisions.
Among other things, the Default Standard requires each party to identify "[t]he 10 custodians most likely to have discoverable information" in a case. These custodians' files will ultimately be searched as part of the document production process.
One common question is: what if we have less than 10 custodians with discoverable information? The answer to that is typically "disclose what you have," but I had not seen a case setting a standard for when a party can disclose less than 10 custodians—until this week.
In Attentive Mobile Inc. v. 317 Labs, Inc., C.A. No. 22-1163-CJB (D. Del.), Judge Burke addressed a discovery dispute where the defendant identified just four custodians. He denied a motion to compel the identification of more custodians based on an argument that the four custodians had a "majority" of the non-duplicative information:
ORAL ORDER: The Court, having reviewed the parties' joint motion regarding discovery disputes, (D.I. 100 ), as it relates to Plaintiff's motion regarding the scope of ESI discovery ("Plaintiff's Motion" or "motion"), and the briefing related thereto, (D.I. 94 ; D.I. 95 ; D.I. 99 ), hereby ORDERS that Plaintiff's Motion is GRANTED-IN-PART and DENIED-IN-PART as follows: (1) With regard to the portion of the motion that asks Defendant to identify at least 10 custodians most likely to have discoverable information and to search the ESI of those 10 custodians pursuant to paragraphs 3(a) and 5(b) of the Default Standard, (D.I. 94 at 2), it is DENIED. Unlike what the Defendant ("Postscript") did in a related dispute in Civil Action No. 23-87-CJB, here Defendant at least made an effort to provide record support (in the form of a declaration) as to why there was good cause to do less than what the Default Standard requires. Defendant's declarant (its CEO) states facts relating to its view that: (a) the likely amount in controversy here is less than $100,000; (b) the damages window is, relatedly, very small; and (c) the four custodians Defendant identified in its initial disclosures "hold the majority of the relevant and/or responsive documents, and any additional custodians would only possess duplicative information and/or documents." (D.I. 95 , ex. B at paras. 2, 6-7) The Court has no responsive record to suggest that these assertions are without basis. (That said, the Court also understands that Defendant has only produced 67 documents so far, which is not a lot.). (D.I. 94 at 2) The Default Standard and Rule 26 are surely mindful of the concept of proportionality, see Fed. R. Civ. P. 26(b); Default Standard at para. 1(b), and so the Court will permit Defendant to search the ESI of just the four custodians it has identified, at least for now.
Attentive Mobile Inc. v. 317 Labs, Inc., C.A. No. 22-1163-CJB, D.I. 112 (D. Del. Apr. 22, 2024).
It's worth noting that the Court gave a lot of weight to the declaration submitted by the defendant, and the fact that the patentee offered nothing to rebut it. Bonus recommendation: If you have a discovery dispute before Judge Burke, follow his procedures and make sure that any material factual assertions—and oppositions thereto—are supported by sworn client declarations.
The Court noted that the plaintiff could request more custodians later, for good cause—of course, that would likely require a trip back to the Court:
If later in the case Plaintiff develops good cause to suggest that an additional custodian's or custodians' information should be searched, it can raise that issue with Defendant (and the Court, if necessary).
Id.
Defendant Successfully Restricts Number of Search Terms
The Court also resolved an interesting dispute regarding search terms. The Default Standard says that, if a party elects to use search terms to identify ESI, the opposing party "may request no more than 10 additional terms" to be used.
Here, it looks like the defendant essentially proposed zero terms, and tried to shift the burden to the patentee. The Court didn't go for that—but did limit discovery to 13 overall terms:
(2) With regard to the portion of the motion relating to search terms to be used on the ESI of these custodians, . . . it appears that Defendant does plan to use search terms regarding its ESI production . . . . As to that, the Court will require that within one week from today, Defendant identify the search terms that it intends to use to search those custodians' data (i.e., the search terms that it believes will likely capture the most relevant information relating to the claims and defenses in the case), and that by no later than two weeks from today (and assuming that Defendant identifies at least 8 such terms), Plaintiff may request the use of up to five additional search terms. If Defendant discloses less than 8 search terms that it plans to use, Plaintiff may suggest a number of terms that will allow the total number of terms to be used to reach no greater than 13 terms.
Id.
Magic Language to Oppose Additional Custodians?
The Court seemed persuaded by the unrebutted argument that just 4 custodians "[1] hold the majority of the relevant and/or responsive documents, and [2] any additional custodians would only possess duplicative information and/or documents," and the limited scope of potential infringement and damages in the case. I imagine those points will be helpful in future disputes on this.
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