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December 19, 2011 Articles

An Update on Delaware Standards for Discovery Issues

Several important developments in the District of Delaware fundamentally change the procedures that litigants should expect.

By Chad S.C. Stover

Over the last few months, there have been several important developments in the District of Delaware. These developments fundamentally change the procedures that litigants should expect in District of Delaware cases. For example:

  • A new judge, Hon. Richard Andrews, was sworn in as Delaware's fourth district judge, obviating the need for Pennsylvania and New Jersey district judges to continue assisting with Delaware's caseload.
  • The Pennsylvania and New Jersey judges were given the option to have their pending Delaware cases reassigned to Judge Andrews, an offer that many of the out-of-state judges have taken.
  • Hon. Christopher Burke began serving as Delaware's second magistrate judge, and it was announced that a third magistrate judge is expected to be approved by spring of 2012.
  • The court began a one-year pilot project to evaluate the increased utilization of magistrate judges, including the assignment of a limited percentage of cases directly to Delaware's magistrate judges.

Most recently, the court has adopted two procedures, a Default Standard for Discovery [PDF] and a Default Standard for Access to Source Code [PDF], that apply if the parties are unable to reach agreement on various discovery issues. The court drafted these standards with the assistance of a small committee of practitioners, one of whom was Connolly Bove's Kevin Brady. It is important to note that these standards apply to all discovery, not just electronically stored information (ESI). The standards expressly cover preservation of discoverable information, privilege logs, the initial discovery conference, initial disclosures, initial infringement and invalidity contentions in patent cases, and electronic discovery procedures. But, more broadly, the Default Standard for Discovery reiterates the court's expectation that litigants will meet and confer early in the litigation about all aspects of discovery and that the parties will agree on reasonable limits to discovery that are proportional and tailored to the parties and the issues. These default standards apply only if the parties cannot reach their own agreement.

Here are the highlights.

Preservation of Discoverable Information
The parties shall preserve nonduplicative discoverable information currently in their possession, custody, or control.

There are categories of ESI in Schedule A that presumptively need not be preserved absent a showing of good cause. This puts the requesting party on notice and shifts the burden onto the party requesting documents to advise the other side of the information it wants to be preserved.

Back up and archival procedures need not change on a going-forward basis absent a showing of good cause.

Privilege Logs
The parties must meet and confer about privilege logs, about whether certain categories of information can be excluded from the logs, and about whether alternatives to document-by-document logs can be exchanged.

The default rule is that parties need not log information generated after the filing of the complaint.

Preservation efforts are protected by the work-product doctrine.
The parties must confer on a nonwaiver order. See Fed. R. Evid. 502. The default rule is that privileged information, if produced, must be returned if it appears on its face to have been inadvertently produced or if notice of inadvertent production is provided within 30 days.

Initial Discovery Conference
The parties must start the meet-and-confer process early because they are required to hold a rule 26(f) conference before the rule 16 scheduling conference with the court.

At the rule 26(f) conference, in addition to the topics identified in rule 26(f), the parties must discuss the likely sources of potentially relevant information, including witnesses, custodians, and other data sources, along with categories of ESI that should be preserved.

Initial Disclosures
Initial disclosures must contain the following:

  • The party's 10 custodians most likely to have discoverable information, ranked from most to least likely.
  • A list of noncustodial data sources, such as enterprise systems, databases, or Sharepoint, from most likely to contain discoverable information to least.
  • Notice of any ESI that is not reasonably accessible, third-party discovery, and information that is subject to third-party privacy concerns or that may need to be produced from outside the United States.

Initial Discovery in Patent Litigation

  • Within 30 days of the scheduling conference, the patentee shall identify the accused products and the asserted patents and produce the file history for each patent.
  • Within 30 days of No. 1, the accused infringer(s) shall produce core technical documents, such as operation manuals, product literature, schematics, and specifications, related to the accused products.
  • Within 30 days of No. 2, the patentee shall produce an initial infringement claim chart relating each accused product to the asserted claims.
  • Within 30 days of No. 3, the accused infringer(s) shall produce initial validity contentions for each asserted claim with invalidating references.

Discovery is limited to the period extending six years before the filing of the complaint, except as to asserted prior art, conception, and reduction to practice.

ESI-Specific Issues
No on-site inspection of electronic media is allowed absent a showing of specific need and good cause.

Search terms shall be disclosed by the producing party, if used. The requesting party may request up to 10 additional "focused" terms.

Search terms shall be used on noncustodial data sources and emails and other ESI maintained by the 10 custodians most likely to have discoverable information.

Litigants must produce single-page TIFF images and associated multipage text files containing extracted text or OCR with Concordance and Opticon load files with metadata. They may only produce native versions of files not easily converted to image format, such as Excel and Access files. Litigants must preserve and produce the following metadata to the extent it exists:

  • Custodian
  • Filename, File Path, File Size, File Extension, MD5 Hash
  • Author, Email Subject
  • Conversation Index
  • From, To, CC, BCC
  • Date Sent, Time Sent, Date Received, Time Received, Date Created, Date Modified
  • Control Number Begin, Control Number End, Attachment Range, Attachment Begin, and Attachment End (or the equivalent thereof).

Keywords: litigation, intellectual property, District of Delaware, Default Standard for Discovery, Default Standard for Access to Source Code

Chad S.C. Stover – December 19, 2011

Copyright © 2011, American Bar Association. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or downloaded or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. The views expressed in this article are those of the author(s) and do not necessarily reflect the positions or policies of the American Bar Association, the Section of Litigation, this committee, or the employer(s) of the author(s).