A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Default Standard

On Search Terms And Defaults

Nathan R. Hoeschen, July 11, 2024
Default Standard Search Terms

The (long breath) Delaware Default Standard for Discovery, Including Discovery of Electronically Stored Information (ESI), is well, a default. It's designed to be flexible enough to accomodate the big case and the small.

Not sure what's going on with Big T's legs in this one
Not sure what's going on with Big T's legs in this one AI-Generated, displayed with permission

This leads to seeming anomalies like section 5(b), which sets forth an in-depth procedure for electing search terms, but does not actually require the parties to use them:

If the producing party elects to use search terms to locate potentially responsive ESI, it shall disclose the search terms to the requesting party. Absent a showing of good cause, a requesting party may request no more than 10 additional terms to be used in connection with the electronic search. Focused terms, rather than over-broad terms (e.g ., product and company names), shall be employed . The producing party shall search (i) the non-custodial data sources identified in accordance with paragraph 3(b); and (ii) emails and other ESI maintained by the custodians identified in accordance with paragraph 3(a).

So, do the parties ever have to use search terms? Judge Williams gave us one of the first clear answers to that question I've seen in Biogen Inc. et al v. Sandoz Inc., C.A. No. 22-2290-GBW, D.I. 364 (D. Del. June 17, 2024):

IT IS HEREBY ORDERED that Biogen's request to compel Defendants to conduct additional search terms is GRANTED-IN- PART. Defendants have not run any keyword searches on ESI yet, so contend that the Delaware Default Standard does not apply. While there is no per se obligation to use ESI search terms, a party has a separate obligation to comply with discovery obligations. Defendants' current manual searches for emails have turned up only a few hundred emails. This production is facially unreasonable. it strikes the Court as implausible that two international companies, in the course of manufacturing, commercializing, and seeking approval of a complex biosimilar drug created only a few hundred responsive emails. While not every case requires search terms, in the circumstances of this case, Defendants have not provided a workable alternative. Defendants' suggestion that Biogen must provide all of the terms, and guess-and-check their way into a reasonably proportionate search, is not how the Delaware Default Standard was meant to operate. Thus, IT IS HEREBY ORDERED that Defendants shall propose search terms to respond to Biogen's requests for productions. Biogen will then have the opportunity to, in accordance with the Delaware Default Standard, propose ten search terms of their own across ten total custodians.

Id. (internal citations omitted).

There you go, there is no "per se obligation" to use search terms, you have to offer a workable alternative.

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Court Rejects Argument That Searching with Search Terms Absolves Accused Infringer of Production of "All" Technical Documents—Including Those that Don't Hit on Terms

Andrew E. Russell, June 15, 2024
Default Standard Document Production

Source Code
Markus Spiske, Unsplash

Over 10 years ago, the District of Delaware adopted its "Default Standard" for discovery, which sets forth several basic rules for discovery, particularly in patent actions.

One of the rules is the requirement to produce "core technical documents" early in the case:

Within 30 days after receipt of the [list of accused products and asserted patents], each defendant shall produce to the plaintiff the core technical documents related to the accused product(s), including but not limited to operation manuals, product literature, schematics, and specifications.

Pretty quickly after its adoption, the Court held that this includes non-public documents, after parties started trying to skirt the rule by dumping user manuals on the patentee.

These days, …

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Do We Now Know the Magic Words for Having Less Than 10 ESI Custodians?

Andrew E. Russell, April 24, 2024
Default Standard Discovery Dispute

"Our two identified custodians have the 'majority' of relevant docs and any others have 'duplicative' info." Discovery dispute goes *poof*? AI-Generated, displayed with permission

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 ...

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A Bold Discovery Request Is Shot Down

Nathan R. Hoeschen, Nov. 29, 2022
Default Standard Discovery

AI-Generated, displayed with permission

Although we have a "default standard" for discovery in DE, there's a lot of leeway for deviation based on the facts of the case. More (or fewer) custodians, more (or less) metadata, search terms that call eldritch horrors from their squalid caches -- pretty much anything is on the table.

Pretty much.

There's always a line somewhere, and I think we found it last week in Acceleration Bay, LLC v. Amazon Web Services, Inc. C.A. No. 22-904-RGA-MPT (D. Del. Nov. 22, 2022). The defendant, AWS, wanted to include the following passage in the ESI Order:

Acceleration Bay shall not seek email discovery relating to infringement or damages, except that Acceleration Bay …
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Delaware's Default Standard for Electronic Discovery Can Block Discovery re: Litigation Hold Notices & Preservation

Andrew E. Russell, June 14, 2022
Default Standard Motion to Compel

People still use paper documents?!?
People still use paper documents?!? Wesley Tingey, Unsplash

Magistrate Judge Fallon addressed a discovery dispute last week, and denied a motion to compel a response to interrogatories regarding efforts to preserve documents in anticipation of litigation:

ORAL ORDER: Having reviewed the parties' discovery dispute letter submissions . . . , IT IS HEREBY ORDERED that: . . . (3) Defendant's request to compel Plaintiff to supplement its responses to Interrogatory Nos. 16-17 and Request for Production Nos. 104-05 is DENIED. Discovery regarding efforts undertaken by Plaintiff to preserve documents in anticipation of litigation is barred under the Court's Default Standard for Discovery of ESI and Fed. R. Civ. P. 26(b)(3)(A) and (B), particularly in the absence of a credible …
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What Does a Party Need to Include in a Patent Complaint? Definitely All Asserted Patents...

Andrew E. Russell, May 18, 2022
Default Standard Twombly

Hawk
Mathew Schwartz, Unsplash

One of the first questions that a patent plaintiff faces in bringing suit is "what do we have to include in the complaint?"

It's common in the District of Delaware for a patent plaintiff to list only a small number of asserted claims from each asserted patent, against a small number of accused products—often just one claim against one product.

Of course, listing more asserted claims may increase the chances that a court finds that the plaintiff stated a plausible claim of infringement in the event of a motion to dismiss. But many plaintiffs are fine with that risk, knowing that they can amend to avoid any motion to dismiss (usually) .

The Court normally permits parties to later add or remove asserted claims or accused products as ...

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Giving Away the Crown Jewels

Nathan R. Hoeschen, Feb. 17, 2022
Default Standard Source Code

Computer Screen
Arget, Unsplash

As we must have discussed in one of the prior 238,000,000 entries (estimated) on this blog, the Default Standard for Discovery requires an accused infringer to produce it's "core technical documents" early in the case (60 days after the scheduling conference), to allow the patentee to prepare its infringement contentions. This leads to the question of what exactly constitutes a "core technical document?" and, in particular, is source code a "core technical document"?

This question has gone largely unaddressed in the years since the Default Standard was adopted [editor's note: with at least one exception back in 2012]. This week, however, Judge Stark gave us a parting gift of a bit of clarity, holding that …

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Judge Burke Relies on Default Standard to Limit Discovery

Jeff Castellano, Dec. 28, 2021
Default Standard Discovery Dispute

The Delaware Default Standard for Discovery, discussed on these pages before, contains both patent- and non-patent-specific discovery rules and limits. Among them are a six-year limit on certain discovery in patent cases and a 10-custodian limit for electronic discovery. When the Default Standard is incorporated into the scheduling order (as it often is), its provisions are no longer guidelines or default provisions, but instead are requirements the parties must abide by, and which cannot be changed absent a showing of good cause.

Default Standard
Default Standard Default Standard for Discovery, U.S. District Court for the District of Delaware

Last week, Judge Burke resolved a number of discovery disputes in U.S. v. Gilead Sciences, Inc., C.A. No. 19-2103-MN, using the Default Standard (incorporated by reference into Judge Noreika's scheduling order) to guide his analysis.

First, Judge Burke denied the government's request for documents regarding manufacturing costs and other factors considered by defendant Gilead in pricing decisions in 2004:

The Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI") (the "Default Standard") sets a presumption that discovery from six years or more before the case's filing will not be permitted. . . . Here, in the few sentences of argument on this point in its briefing, . . . the Government does not provide enough information to establish the requisite good cause. During the teleconference, the Government suggested that good cause was established because it was only in 2004, and at no time thereafter, that Defendants had extensive discussions relating to the factors contributing to Truvada pricing decisions. However, that assertion is merely attorney argument, as there is no record evidence before the Court supporting such a conclusion.

Judge Burke also limited document discovery regarding Board of Directors meetings where pricing or the patents-in-suit were discussed to six years prior to the complaint, but did permit some discovery on those topics within the six-year period. ...

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A Clarification of an Old Standard

Nathan R. Hoeschen, May 27, 2021
Default Standard

New Tricks?
New Tricks? Go to Charles Deluvio's profile Charles Deluvio, Unsplash

The Delaware Default Standard for Discovery, which has been around in its present form for about a decade now, applies to some extent in every Delaware patent case. Given how frequently discovery issues are litigated in Delaware, I was somewhat surprised to see a new ruling from Judges Connolly and Hall clarifying a bit of the Default Standard that I don't believe has ever come up before.

In addition to describing the initial exchange of contentions and the format for ESI production, the Default Standard also sets a presumptive limit on the time period for discovery:

Absent a showing of good cause, follow-up discovery shall be limited to a term of 6 years before the filing of the complaint, except that discovery related to asserted prior art or the conception and reduction to practice of the inventions claimed in any patent-in-suit shall not be so limited.

Default Standard Section 4(e)

The question that arose this month in LEO Pharma A/S et al v. Glenmark Pharmaceuticals Ltd., C.A No. 20-1359-CFC-JLH, D.I. 60 (D. Del. May 25, 2021), was what is "follow-up discovery"? ...

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Initial Contentions in Delaware Patent Cases: A Primer

Jeff Castellano, Feb. 23, 2021
Default Standard KB

In the vast majority of patent case in Delaware, the parties are required to serve initial patent disclosures in the form of infringement and invalidity contentions (separate from the contentions they might otherwise serve as part of written discovery). These initial contentions set the stage for fact discovery, claim construction, expert reports, and (in some cases) settlement.

Initial patent disclosures were formalized in this District to some degree by the Court's creation of the Default Standard for Discovery nearly a decade ago. The Default Standard established a staged set of initial disclosures that was eventually adopted by most of the Judges here.

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