District of Delaware Decision - Adding New Search Terms Not Burdensome

Recently, Judge Richard Lioret issued a decision in Abbvie, Inc. v. Boehringer Ingelheim Int'l Gmbh, No. 17-cv-01065-MSG-RL, 2018 U.S. Dist. LEXIS 99812 (D. Del. June 14, 2018) ruling on the Defendants' Motion to Compel the Plaintiffs to run additional search terms. The Plaintiffs had already run 100 search terms and produced more than 8 million pages of documents. They objected to running 5 of the 10 additional search terms proposed by the Defendants because they were generic scientific terms. They countered by offering to search for the terms on a limited set of documents, and to search for the five terms within 20 words of a product name.

The Defendants contested the burdensomeness of the search by asserting that when used with a less restrictive AND connector (rather than WITHIN) the search terms would return about 45,000 documents. The Plaintiffs did not perform sampling to indicate that the number of search results would be greater than this amount.

Judge Lioret distinguished his decision from Inventio AG v. ThyssenKrupp Elevator Americas Corp., 662 F. Supp. 2d 375 (D.Del. 2009), in which the requesting party had the burden to prove that its additional searches would get unique information because it sought to add data from new custodians to its search. "Here, Boehringer has a right, under the district court's ESI rule, to have 10 search terms executed in addition to those chosen by AbbVie. Boehringer is not adding to the ample number of AbbVie custodians (50) previously fixed by agreement of the parties, or seeking to add search terms over and above those already allocated to the parties." Abbvie, 2018 U.S. Dist. LEXIS 99812, at * 5. The court ruled that the Defendants' additional search terms, using a WITHIN operator [the Defendants modified their request to only include documents where their proposed terms appeared within 200 words of the product name] were not more burdensome, or less likely than the Plaintiffs' self selected terms to get hits. The new search terms were chosen from the patents-in-suit and were "reasonably focused". Judge Lioret assumed that a search that would return 45,000 documents would be less than 10% of a prior production 8 million documents (neither of the parties submitted an estimate of the average page count of the documents) and would comply with Delaware Default Standard for Discovery § 5(b) which allows a requesting party to request 10 additional searches so long as they are not overboard. The new search terms are also consistent with Fed. R. Civ. Pro. 26(b)(1) as they are, "reasonably relevant to the claims and defenses in the case, and proportional to the needs of the case. The financial stakes are large, and both parties' resources are abundant. The burden of discovery does not outweigh its likely benefit." Id. at *7.

The court also allowed the Defendants to add more custodians to the search because it showed plausible reasons why the restriction of the search to 'inventor' custodians would miss relevant documents.