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, many of the judges' form scheduling orders also modify this provision, requiring only core technical documents "sufficient to show how the accused product(s) work(s)," not all documents—that's a pretty big difference.
The Default Standard also set rules for search terms, including that if a party elects to use search terms to search its documents, the opposing party may request no more than 10 terms.
These two provisions of the Default Standard—core technical documents and search terms—come up a lot in patent cases. There are a lot of fights about what is and is not "sufficient to show" how a product works, and about the scope of search terms.
One quirk of the search term provision is that it implies that searching with search terms—no matter how bad—absolves a party of producing anything that doesn't hit on the original search terms plus the opposing party's 10 additional terms. Some attorneys have taken the position that this language permits a party to withhold responsive documents its attorneys know about simply because they don't match the search terms.
I haven't seen a case that squarely addressed this, but Judge Fallon's order last week in FriendliAI Inc. v. Hugging Face, Inc., C.A. 23-816-MN, D.I. 63 (D. Del. June 10, 2024) comes close.
There, the plaintiff moved to compel production of "all technical information for the Accused Products." Id., D.I. 66. Defendant responded that it had met its "obligations" by searching using the agreed upon search terms:
The parties engaged in a substantial and iterative negotiation to arrive at a comprehensive set of agreed search terms for purposes of Defendant’s document collection. Defendant conducted a search using the agreed terms and has produced responsive documents totaling approximately 90 gigabytes. This production includes any technical documents identified in the search. Plaintiff has the technical documents pertinent to its own agreed search terms and Defendant has not withheld technical documents. Plaintiff has not identified even a single, specific technical document that Defendant has allegedly not produced. As such, Defendant does not know what additional it is that Plaintiff would have it produce. Should it become aware of any additional technical documents, Defendant will produce them in accordance with its obligations to do so and the case schedule.
Id., D.I. 61. By "in accordance with its obligations to do so," I'm guessing they mean something like "but only if they hit on the search terms."
The Court rejected this position, and ordered the defendant to produce all technical documents:
Plaintiff's motion to compel Defendant to produce all documents regarding the technical operation of the Accused Products, including regarding the research, design, development, testing, implementation, incorporation, and deployment of TGI, and source code for all Accused Products, including Enterprise Hub, is GRANTED, and Defendant shall produce the requested information on or before June 20, 2024. . . . Defendant's position that its core technical document production is complete because it referenced publicly available documents, produced documents hitting on Plaintiff's search terms, and provided source code is not persuasive. The scheduling order required Defendant to produce "non-publicly available operation manuals, product literature, schematics, and specifications." . . . Moreover, the production of source code is not a substitute for the production of these core technical documents. See Princeton Digital Image Corp. v. Konami Digital Ent'mt Inc., 316 F.R.D. 89, 95 n.11 (D. Del. 2016) ("The Court is aware of no rule that states that if a defendant has produced source code, Plaintiff is not entitled to any other 'core technical documents.'").
Id., D.I. 62. The order didn't get into the details, but it does squarely reject the position that a party can just run its search terms and produce nothing more.
A Hole in the Default Standard?
This does seem to be a significant hole in the Default Standard. I don't think that the drafters intended that a party could simply come up with a narrow set of search terms, disclose them to the other side, and shift the burden to the other side to find all of their own discovery using only 10 terms.
Plus—and I've seen this come up—what happens when a party later serves additional RFPs? Can the opposing party just defeat them entirely by saying "we already ran our search, we are not running more terms for these new RFPs?" Attorneys sometimes seem to take that position.
I know there was a committee last year looking at revising the Default Standard. I'm not sure whether they hit on this issue or not. But it would be a worthwhile area for attention.
I'm not sure what the best fix would be. But, in my view, the fact that a party searched using disclosed terms certainly should not absolve it of any obligation to produce known relevant and responsive materials, just because they don't hit on search terms. The search term process wasn't meant to shield a party from producing relevant and responsive discovery.
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