A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Discovery

Judge Williams Requires Party to Use ESI Search Terms

Andrew E. Russell, May 30, 2025
Search Terms E-discovery

"Back in my day, we locked our first year associates in a room stacked with banker's boxes for weeks on end! None of this 'search term' mumbo jumbo!" AI-Generated, displayed with permission

Judge Williams issued a lengthy decision today in GlaxoSmithKline Biologicals SA v. Pfizer Inc., C.A. No. 24-512-GBW (D. Del.), addressing a number of disputes relating to proposed protective and ESI orders in multiple related actions.

There is a lot of interesting material in the decision, but one ruling in particular caught my eye, because it's an issue that comes up a lot: whether a party has to use search terms to search ESI.

Most, but not all, of our judges have adopted the Court's Default Standard for Discovery, Including Discovery of Electronically Stored Information ("ESI")—a document that, despite it's catchy name, is usually referred to as the "Default Standard."

The Default Standard places the option of using search terms in the producing party's hands:

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 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).

Thus, producing parties sometimes decide not to use search terms, and to instead review and produce their ESI the old-fashioned way (potentially including hours of brutal contract-attorney document-by-document review).

Occasionally the opposing party will ask the producing party to use search terms. In cases governed by the Default Standard, I would expect a producing party to feel little pressure in responding "no," since the Default Standard recognizes that using search terms is optional.

In GlaxoSmithKline, however, the Court ...

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Delay Is a Motion Killer: Part Three

Andrew E. Russell, April 3, 2025
Hague Letters Rogatory

Courthouse Clock
AI-Generated, displayed with permission

We've written before about how delay can kill your discovery motions. We got another straightforward example on Monday in Novartis Pharmaceuticals Corporation v. HEC Pharm Co., Ltd., C.A. No. 20-133, D.I. 340 (D. Del. Mar 31, 2025).

There, the defendants sought depositions of two foreign inventors through the Hague convention. The defendants have known the relevance of the inventors' knowledge since at least July, 2022, but only moved for issuance of letters rogatory in December 2024.

The case was stayed for a portion of that time, but in total, the Court found that there was no good reason that it should have taken so long to seek this discovery:

During the teleconference, Defendants' …
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Plaintiff Succeeds at Forcing Discovery Pending a Motion to Dismiss Before Judges Connolly and Tennyson

Andrew E. Russell, March 3, 2025
Motion to Stay Motion to Dismiss

Discovery in D. Del.: this train ain't stoppin! Probably.
Discovery in D. Del.: this train ain't stoppin! Probably. Alistair MacRobert, Unsplash

When I started practicing here in the District of Delaware (the decade before last), the typical advice was that a patent case would proceed to scheduling and discovery even if the defendant files a motion to dismiss. Lately, though, several of the District of Delaware judges have been holding off on initiating the FRCP 16 scheduling process when the defendant files a motion to dismiss.

Often, as we've discussed, a smart plaintiff in that situation will file a letter asking the Court to direct the parties to conduct an FRCP 26(f) conference, so that discovery can move forward. Most often that seems to work. …

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Court Declines to Enforce Discovery Agreement, Suggests Client Overruled Its Outside Attorneys

Andrew E. Russell, Dec. 9, 2024
Discovery Discovery Agreement

Burning Paper Boat
Amin Moshrefi, Unsplash

Discovery agreements are a powerful tool. If you promise to produce to do or not do something during discovery, the Court will typically enforce that:

Litigating parties, represented by able patent counsel, are expected to uphold the agreements they make during a case, and the Court should ordinarily (absent extreme circumstances not present there) enforce such agreements.

The Nielsen Company (US), LLC v. TVision Insights, Inc., C.A. No. 22-057-CJB, D.I. 177 (D. Del. Mar. 8, 2024).

What are the kind of "extreme circumstances" that warrant not enforcing a discovery agreement? We got a hint of that last week in In re: Entresto (Sacubitril/Valsartan) Patent Litigation, C.A. No. 20-2930-RGA, D.I. 1683 (Dec. 5, 2024). …

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You Can't Withhold Discovery—Including Source Code—Pending a Rule 12 Motion in D. Del.

Andrew E. Russell, Dec. 6, 2024
Source Code FRCP 12

This train don't stop until the close of fact discovery (... unless the Court stops it)
This train don't stop until the close of fact discovery (... unless the Court stops it) Jed Dela Cruz, Unsplash

The Court issued an oral order in airSlate, Inc. v. Inkit, Inc., C.A. No. 23-1307-RGA-SRF (D. Del.) yesterday, and it's a good reminder of a general rule that frequent D. Del. practitioners already know: once discovery starts, it generally proceeds even while a Rule 12 motion is pending.

The Court's order yesterday described how the defendant in airSlate had objected to producing its source code solely on the basis that a Rule 12 motion for judgment on the pleadings was pending:

Defendant agreed to produce source code in its response to Request for Production …
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Court Denies Production of Corporate-Level Financials

Andrew E. Russell, Sept. 9, 2024
Discovery Dispute Discovery

"Yes, we need to know their financials for our permanent injunction. It totally won't help us in settlement negotiations or anything." AI-Generated, displayed with permission

This is another one where I saw a potentially useful order about an issue that comes up from time to time, and thought "I should write a blog post about that, so I can find it later." I hope this will be helpful for others as well.

Last week in Nexus Pharmaceuticals, Inc. v. Exela Pharma Sciences, LLC, C.A. No. 22-1233-GBW (D. Del.), the Court addressed the question of whether a plaintiff in a "competitor-competitor" patent case could compel production of the defendant's corporate-level financials. It held that no, it could not, …

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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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Delay Is a Motion Killer

Andrew E. Russell, April 15, 2024
Delay Motion Practice

Stick Figure Watch
AI-Generated, displayed with permission

If there is one thing that tends to kill discovery motions, it's delay. If you want to have the best chance of winning your motion to compel, supplement, strike, etc., you need to bring the motion early. Don't wait.

We got a good example of that last week in CosmoKey Solutions GmbH & Co. KG v. Duo Security, Inc., C.A. No. 18-1477-JLH, D.I. 163 (D. Del. Apr. 9, 2024). There, a defendant sought to compel a deposition of an inventor before a Markman hearing, arguing that the testimony was important for claim construction. The Court denied the request, in part because they waited too long:

ORAL ORDER: The Court has reviewed the discovery …
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Court Holds Defaulted Defendant Is Not Subject to Discovery—But Their Former E-Discovery Vendor May Be

Andrew E. Russell, April 12, 2024
E-discovery Vendor

Knights on HDD
AI-Generated, displayed with permission

On Wednesday, Judge Fallon issued a memorandum order in Kurt Morales II v. Sunpath Ltd., C.A. No. 20-1376-JLH-SRF (D. Del.), a class action suit alleging that various defendants are telemarketers who made robocalls violating the Telephone Consumer Protection Act.

More than three years into the litigation, counsel for one of the defendants, Sunpath Ltd., withdrew, and the Court ordered Sunpath Ltd. to retain new counsel. D.I. 232. When it failed to do so, the clerk entered a default against it. Id.

Plaintiff argued that Sunpath defaulted specifically to avoid having to face discovery. D.I. 265 at 1. Plaintiff therefore served a subpoena on Sunpath's e-discovery vendor Everest Discovery, LLC who, unsurprisingly, pushed back. …

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Confirmed (Again): Parties Don't Have to Use Search Terms to Collect Documents—Even in a Complex Patent Case

Andrew E. Russell, Feb. 14, 2024
E-mail Production Search Terms

Searching with Search Terms
AI-Generated, displayed with permission

This is a dispute I've seen come up in a few cases. The D. Del. Default Standard for Discovery includes a provision about search terms, setting forth that if a party uses search terms to locate responsive documents, it must disclose the search terms and allow the opposing party to request up to 10 additional terms.

This provision can cause some confusion. Sometimes parties read the Court's Default Standard, see the search term provision, and think that's the only way to collect ESI. Or, sometimes, a party really wants to dictate search terms to the other side, and argues that the Default Standard requires the use of search terms.

It doesn't. A party can elect …

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