Paragraph 3 of Delaware's Default Standard for Discovery requires the parties to disclose, early in the case, "[t]he 10 custodians most likely to have discoverable information in their possession, custody or control, from the most likely to the least likely."
At a glance, this provision seems to require disclosing more or less the same universe of people as Rule 26(a), which requires disclosure of "the name and, if known, the address and telephone number of each individual likely to have discoverable information . . . ."
A recent decision from Judge Fallon in DataCore Software Corporation v. Scale Computing, Inc., C.A. No. 22-535-GBW-SRF (D. Del Nov. 30, 2023) (Mem. Order), however, illustrates one important difference between the two disclosures.
The Plaintiff there listed the inventors of the asserted patent on both their Paragraph 3 and Rule 26(a) disclosures. None of the inventors, however, were currently employed by the Plaintiff. Accordingly, the plaintiff had none of their ESI to produce to the Defendants. After realizing this, the defendant moved to replace those custodians with others who might actually have documents.
Judge Fallon rebuked Plaintiff for including the inventors on its paragraph 3 disclosures:
this ruling should not be construed to condone Plaintiff's identification of five ESI custodians who were later discovered to have no ESI. Plaintiff's suggestion that no large company retains ESI for twenty years, when the Asserted Patent was filed, begs the question of why these non-employee inventors were identified by Plaintiff as ESI custodians in the first instance.
Id. at 6-7.
As you might gather from the above, however, the Court actually denied the defendants motion to replace the custodians for two reasons. First, the plaintiff waited until well after the close of fact discovery to raise the dispute:
There is no evidence on the present record that Defendant challenged Plaintiff's Paragraph 3 designations after those designations were made, even though six of the nine designees are named inventors of the Asserted Patent, and only two of those inventors were highly ranked on the Paragraph 3 disclosure. Moreover, Defendant did not challenge the sufficiency of the custodial designations or production when the deadline for substantial completion of document production expired on June 1, 2023. Instead, Defendant first raised an issue regarding the lack of ESI production for five of the nine custodians on October 9, 2023, more than a month after the close of fact discovery.
Id. at 4.
Second, they failed to explain why they needed the particular additional custodians they selected:
Instead of targeting one or two additional custodians likely to have relevant information, Defendant lists five proposed replacement ESI custodians without adequately explaining why each of these individuals are believed to have relevant, noncumulative information tethered to the claims asserted in the case.
Id. at 5.
Pro-tip - if you see a bunch of inventors on a paragraph 3 disclosure, challenge that right quick.
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