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.
Long-time readers can maybe skip this post, as we've discussed this issue before.
But I thought it was worth a post, because it's still something that comes up from time to time. But the court's rulings are clear: You can't redact information from document production just because you think it is irrelevant. You have to produce the documents without redactions.
This came up again this week, this time before visiting judge Murphy. Consistent with our other judges, he rejected the idea of permitting redactions of irrelevant material:
Defendants’ motion to modify the stipulated protective order (DI 52) is DENIED. . . . Defendants were unable to identify any occasion where a district court …
The judges' form scheduling orders in D. Del. have deadlines for "substantial completion" of document production. Generally, this deadline is set so that the parties can get most of their documents out and then proceed to depositions.
This tends to be one of the key deadlines in cases, and it often the subject of disputes. We've talked before about how a party cannot withhold a category of documents until after the deadline, and how waiting to produce things until after the deadline can result in exclusion.
Parties typically agree to make "rolling productions" up until that deadline. But, sometimes, the "rolling production" is a trickle, with the bulk of the documents coming just before the deadline—leaving the other side to scramble to review everything in time for depositions.
This week we got some useful precedent from Judge Burke about how that technique is inappropriate, and how parties need to spread their "rolling" production out proportionally:
ORAL ORDER: The Court, having reviewed Plaintiff's discovery dispute motion ("Motion"), (D.I. 73), and the briefing related thereto, (D.I. 70; D.I. 72; D.I. 82), hereby ORDERS that the Motion is GRANTED-IN-PART and DENIED-IN-PART as follows: (1) The Court agrees with Plaintiff that Defendants should make an orderly and proportional production of their ESI discovery, such that they should not be dumping the bulk of those remaining documents on Plaintiff at or near the December 5 substantial completion deadline. But the Court sees that Defendants have begun to move forward with those productions (perhaps spurred by Plaintiff's Motion), and it also agrees with Defendants that it is not in a good position to set an arbitrary number of ESI documents that should be produced each X days on Y dates.; and (2) So the Court will simply order that between now and December 5, Defendants should produce their remaining ESI discovery on a consistent, roughly proportional, rolling basis, such that Plaintiff does not get the bulk of the remaining documents at or near the deadline. Ordered by Judge Christopher J. Burke on 11/6/2023. (mlc) (Entered: 11/06/2023)
State Farm Mutual Automobile Insurance Co. v. Amazon.com, Inc., C.A. No. 22-1447-CJB, D.I. 91 (D. Del. Nov. 6, 2023).
The plaintiff had sought an order compelling the defendant to produce "50,000 documents per week" over the 7 weeks that were then remaining before the substantial completion deadline. The Court rejected that part of the request, possibly because the defendant argued it didn't have all that many documents.
But the order makes clear that the defendant has to roll out what it does have in a "roughly proportional, rolling basis" before the final deadline. Nice!
I've attached the order below so that we can all find it next time this issue comes up in a discovery dispute.
Judge Fallon made an opinion public today that deals with whether a plaintiff can get discovery on unlaunched, abandoned, and future products in the lead up to a preliminary injunction hearing. The Court held that discovery on those products was not proportional to the needs of the case:
Zwift has shown that the document discovery requested by Wahoo is not proportional to the needs of the case at this stage of the proceedings. (D.I. 72) The complaint establishes that Wahoo was aware of Zwift’s unlaunched and abandoned hardware products, yet it did not raise these products in its motion for a preliminary injunction, indicating that the relevance of the requested discovery to the preliminary injunction inquiry …
Judge Andrews resolved a discovery dispute yesterday where plaintiff challenged defendant's "relevancy redactions." According to the plaintiff:
[Defendant] DuBois routinely applied, and refuses to remove, so-called relevancy redactions to the few documents it has produced in this case. . . . The DuBois redactions that [plaintiff] Ecolab has challenged are not addressed to preserving any privilege and are improper, particularly in view of the protective order that serves to safeguard DuBois’ confidential information in this case.
Judge Andrews seems to have shot this down quickly, holding that the defendant cannot redact for reasons other than privilege:
ORDER: By no later than May 30, 2022, Defendant shall produce to Plaintiffs all documents redacted for reasons other than preservation of …
In a brief order issued last week, Judge Andrews denied a plaintiff's request that the defendant be ordered to re-produce tens of thousands of redacted documents from its production in unredacted form. According to the order, the defendant had produced 24000+ documents with redactions. The parties had agreed, via the protective order, that confidential information irrelevant to the case at hand or information not otherwise discoverable could be redacted.
Jeff Castellano
Nonetheless, plaintiff argued that the defendant's "voluntary production of the fully-redacted documents inherently admits that they contain responsive material … Something underneath these full-document redactions must be responsive, or [defendant] would not have produced the documents."
In reliance on a sworn declaration from defendant's attorney and his own review of a sampling of the redacted documents, Judge Andrews concluded that there was no basis on which to find the redactions were inappropriate:
After reviewing the unredacted version of Plaintiffs’ Exhibit A, I have concluded that [defendant's] justifications for its redactions to Exhibit A – that the first document pertained to a different product and that the second document and the redacted portions of the third document are covered by the work product doctrine and attorney-client privilege – are sound. [Plaintiff] has given me no reason to doubt that a review of the remaining redacted documents would produce similar results and no reason to question the trustworthiness of Mr. Barry’s sworn declaration.
Notably, defendant's counsel Mr. Barry stated in his declaration that he had "personally reviewed" all of the redacted documents and had identified 39 that were erroneously redacted. It appears that the declaration went some way to reassuring Judge Andrews that the redactions were not overdone. ...
The parties in Progressive Sterilization, LLC v. Turbett Surgical LLC, C.A. No. 19-637 (D. Del.) brought a dispute about "excessive" redactions to certain production in their patent action.
The defendant sought information from third parties who were under contract with the plaintiff, including various consultants and a former business partner.
Plaintiff apparently has confidentiality agreements with these people, and tried to filter their document production in the case, redacting information it thought should not be produced to the defendant. According to defendant's letter brief:
[Plaintiff] insisted on reviewing [the] third-party subpoena recipients’ responsive documents and redacting certain non-privileged content . . . prior to their production to Defendants
Judge Andrew's In re Chanbond opinion an Friday focused primarily on reopening discovery, but it also addressed a second issue, which I thought merited a separate post.
Shortly before trial, in a reply brief, Defendants sought production of an "Advisory Services Agreement" between the plaintiff and third party IPNav. They had previously informally requested the document at a deposition, and renewed that request as part of their motion to reopen discovery after the document's importance became apparent in light of the standing dispute. Defendants request at the deposition was apparently on the record, and Plaintiff indicated it would look for the document, but Defendants did not follow up with a formal document request:
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