Default Discovery Standards

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Article

Richard L. Horwitz, David E. Moore, Philip A. Rovner, Jonathan A. Choa

On December 8, 2011, the U.S. District Court for the District of Delaware adopted new default standards for certain types of discovery.  The first set of standards covers electronic and general discovery issues and provides some specific guidelines for discovery in patent litigation.  The second set of standards covers access to source code.  Both documents are publicly available at http://www.ded.uscourts.gov/.  Generally speaking, the parties are expected to reach agreement on how to conduct discovery.  The following rules apply in the absence of agreement.

Patent Litigation Discovery

Initial Discovery.  Initial disclosures in patent litigation are now strictly regimented, and must follow specific timing and order guidelines.  (See id. at §§4(a)-(e)).  Specifically, a patent owner asserting infringement must identify the accused products, methods, systems and/or instrumentalities, the asserted patent(s) allegedly infringed, and the file history for each patent within thirty (30) days of the Rule 16 conference.  (Id. at §4(a)).  Within 30 days of receipt of the foregoing, each party accused of patent infringement must produce the core technical documents related to the accused product(s).  (Id. at §4(b)).  Next, the party asserting infringement has another 30 days to produce to each party accused of infringement a claim chart relating each accused product to the asserted claims allegedly infringed.  (Id. at §4(c)).  From this point, the accused party has another thirty (30) days to produce its invalidity contentions and supporting references.  (Id. at §4(d)).  Absent good cause, follow-up discovery is limited to a period of six (6) years before filing of the complaint.  This limitation does not apply to discovery of asserted prior art and conception or reduction to practice of the inventions claimed in the patent(s)-in-suit.  (Id. at §4(e)). 

Default Standard for General Discovery

Preservation of Discoverable Information.  While the parties must use reasonable, good faith and proportional efforts to preserve, identify, and produce relevant information, and set reasonable limits on discovery, they are not required to modify their ordinary data archive procedures absent a showing of good cause.  (See Default Standard for Discovery, §§1(a)-(c)(ii)).  In addition, actions undertaken to preserve discoverable information are protected from disclosure and discovery.  (Id. at §1(d)(iii)).  Notably, certain types of electronically stored information (“ESI”), such as duplicative or ephemeral files, are excluded from the duty of preservation.  (Id. at Schedule A, ¶¶ 1-13).[1]   
 
Privilege.  The parties must confer regarding whether any categories of information can be excluded from privilege logs and whether alternatives to document logs are feasible.  (Id. at §1(d)(i)). Although often agreed to by parties, significantly the standards state that privilege logs need not include information generated after filing the complaint.  (Id. at §1(d)(ii)).  The parties must also confer regarding a non-waiver order.  (Id. at §1(d)(iv)).  Until a non-waiver order is entered, inadvertently produced materials must immediately be returned if facially privileged or if notice is provide within 30 days.  (Id.)
 
Initial Discovery Conference.  The parties must discuss the parameters of their anticipated discovery at the initial Rule 26(f) conference, which must take place before the Rule 16 scheduling conference.  (Id. at §2(a)).  At the initial discovery conference, the parties must discuss the issues, claims and defenses that define the scope of discovery, likely sources of potentially relevant information, technical information, handling of privileged information, and categories of ESI that should be preserved.  (Id. at §§2(b)(i)-(v)).

Initial Disclosures.  Initial disclosures must be made within thirty (30) days of the Rule 16 conference.  (Id. at §3).  Presumably reacting to the breadth and cost of discovery in many cases, the initial disclosures must identify the ten (10) custodians most likely to have discoverable information and any non-custodial data sources such as a system or server that automatically stores ESI.  (Id. at §§3(a)-(b)).  The parties must also give notice of any issues related to ESI that a party asserts is not reasonably accessible, third party discovery, and production of information subject to privacy concerns.  (Id. at §§3(c)(i)-(iii)).  Lack of proper notice of these issues may destroy any protections afforded to such information.  (Id. at §3(c)(iii)).  

Default Standard for Electronic Discovery

E-Discovery Searches.  On-site discovery of electronic media is not permitted absent a showing of specific need and good cause.  (Id. at §5(a)).  Additionally, search terms used to locate potentially responsive ESI must be disclosed to the requesting party, who may request ten (10) additional search terms.  (Id. at §5(b)).  Search terms must be more focused than over-broad product and company names and should be used to search non-custodial data sources, emails, and ESI maintained by identified custodians.  (Id.). 

Format of E-Discovery.  Electronically stored information and non-ESI must be produced to the requesting party as text searchable image files, such as PDF or TIFF.  (Id. at §5(c)).  The files must preserve underlying ESI such as metadata, original formatting, and revision history.  (Id.).  Information must be produced as single space TIFF images and associated multi-page text files containing extracted text or OCR with Concordance and Opticon load files.  (Id.).  Only files not easily convertible to image format, such as Excel and Access files, should be produced in native format.  (Id. at §5(d)).  
 
Preservation of Metadata.  The following metadata, to the extent it exists, must be provided for all ESI produced: custodian, file path, email subject, conversation index, from, to, CC, BCC, date sent, time sent, date received, time received, filename, author, date, date created, date modified, MD5 hash, file size, file extension, control number begin, control number end, attachment range, attachment begin, and attachment end.  (Id. at §5(e)). 

Default Standard for Access to Source Code

Provision of Source Code.  Absent agreement between the parties, a single copy of source code must be made available to the requesting party on a stand-alone, password protected computer supplied by the source code provider and located with an independent escrow agent.  (Default Standard for Access to Source Code, ¶¶ 1-3).  The source code provider must also provide in print and electronic format a manifest of the contents of the computer, which includes the name, location, and MD5 checksum of every source and executable file escrowed on the computer.  (Id. at ¶ 6).  Source code may not be printed or copied without permission or court order.  (Id. at ¶ 5). 

Analysis and Accessibility of Source Code.  The stand-alone computer must contain any software utilities necessary to view, search, and analyze the source code.  (Id. at ¶ 7).  Specifically, the utilities must allow a user to i) view, search, and line number any source file, ii) search for a given pattern of text in the source files, iii) compare two files and display differences therein, and iv) compute the MD5 checksum of a file.  (Id.).  Access to the computer will be provided to a total of two (2) outside counsel and two (2) expert witnesses for the requesting party, after notice and an opportunity to object is provided to the source code provider.  (Id. at 4).  No one from the providing party shall have access to the computer during the remainder of discovery.  (Id.).  
 
Incomplete Source Code.  If the Court determines that the issue of missing files needs to be addressed, the source code provider will be required to install on the computer sufficient utilities and instructions necessary to rebuild and implement the application from source code.  (Id. at 8). 

Note

1. The categories of ESI that do not need to be preserved absent a showing of good cause include temporary files such as random access memory, online access data,  frequently automatically updated metadata fields; deleted or fragmented data; substantially duplicative back-up data; voice messages; instant messages, electronic mail, call logs, and other electronic data stored on mobile devices that is routinely saved elsewhere; server system or network logs; or data remaining from archaic systems and which is no longer intelligible on current systems.  (Id. at Schedule A, ¶¶ 1-13).

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