United States District Court, D. Delaware
ABBVIE INC. and ABBVIE BIOTECHNOLOGY LTD
BOEHRINGER INGELHEIM INTERNATIONAL GMBH, BOEHRINGER INGELHEIM PHARMACEUTICALS, INC., and BOEHRINGER INGELHEIM FREMONT, INC.
MEMORANDUM CONCERNING DOC. NO. 75
RICHARD A. LLORET U.S. MAGISTRATE JUDGE
(collectively “Boehringer”) have moved to compel
plaintiffs (collectively, “AbbVie”) to run
additional search terms, pursuant to paragraph 5(b) of the
Delaware Default Standard for Discovery (DDSD 5(b)).
Boehringer's Motion at 1 (“BI Mot., ” Doc.
No. 75). AbbVie has responded (“AV Res., ” Doc.
No. 94) and Boehringer has replied to the response (“BI
Rep.” Doc. No. 103).
has produced over 8 million pages of documents, based on
“over 100 broad, comprehensive search terms.” AV
Res. at 1. Boehringer requested 10 additional terms, as
provided under DDSD 5(b). BI Mot. at 1. AbbVie ran five of the
terms, and objected to search terms 2, 3, 6, 7 and
Id. at 2. The gist of AbbVie's objection to
these five additional terms is that they are overly
burdensome, because they “include generic scientific
terms and will return large volumes of irrelevant
information[, ]” and that the “requested searches
are inconsistent with both the Federal Rules of Civil
Procedure and the Delaware Default Rules for
Discovery.” AV Res. at 1. AbbVie offered to run the
searches against a limited number of custodians, defined as
“formulation or formulation and manufacturing
inventors, ” and to search for documents containing the
word “Humira (or similar product name terms) . . .
within 20 words of Boehringer's otherwise generic
terms.” Id. at 2. Boehringer turned down the
proposed limitations. Id.
points out that its search terms are not “generic,
” but were selected from language contained in the
patents-in-suit. BI Mot. at 4. Boehringer contends that both
of AbbVie's proposed restrictions - on custodians and on
the distance between the word “Humira” and
another search term - are overly restrictive, and will
exclude relevant documents. BI Mot. at 3, 4 (supplying
examples). Boehringer also disputes the burdensomeness of its
requested searches, pointing out that a less restrictive
search using an “AND” connector (rather than the
more restrictive “WITHIN” connector) generated
“over 45, 000 documents, ” by AbbVie's count.
BI Mot. at 4. “Given the importance of discovery to
this case and the resources AbbVie has at its disposal, this
number is not overly burdensome[, ]” argues Boehringer.
Id. AbbVie has not supplied any particulars, by way
of estimate or sampling, to suggest that the number of
documents produced by Boehringer's more restrictive
search terms would be greater than 45, 000.
argues that it is Boehringer's burden, as the moving
party, to demonstrate the relevance of the information it
seeks. AV Mot. at 3 (citing to Inventio AG v.
ThyssenKrupp Elevator Americas Corp., 662 F.Supp.2d 375,
381 (D.Del. 2009)). AbbVie argues that Boehringer has a
special burden to establish that its proposed additional
searches “would provide unique relevant
information not already obtained[.]” Id.
(quoting Fort Worth Emps.' Ret. Fund v. J.P. Morgan
Chase & Co., 297 F.R.D. 99, 107 (S.D.N.Y. 2013)).
AbbVie's reliance on Fort Worth is misplaced.
There, the plaintiff sought to add additional custodians to
an already formidable number of custodians fixed through the
court's ESI procedures, without any demonstration that
the added custodians would supply unique information not
otherwise acquired through searches of the existing
custodians. 297 F.R.D. at 107.
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. There is no
special burden, under Fort Worth, and Boehringer has
met the general burden that its search proposals be
reasonably calculated to lead to discoverable information.
Id. at 106.
that Boehringer's proposed search terms, as modified in
its reply (Doc. No. 103), comply with DDSD 5(b). AbbVie's
100 self-selected search terms made ample use of
“Humira AND” search strings. I find that
Boehringer's 10 additional terms, making use of a more
restrictive “Humira WITHIN” search, are not
disproportionately less focused, more burdensome, or less
likely to retrieve relevant documents than AbbVie's 100
or more searches. Boehringer's search terms are chosen
from language contained in the patents-in-suit, employ
reasonable search limitation strategies, and appear to be
reasonably focused. AbbVie has informed me that it has
produced over 8, 000, 000 pages of documents. Boehringer
informs me that by AbbVie's count, a previous and more
inclusive version of the proposed searches would generate 45,
000 or so documents. I am not supplied with a multiplier for
estimating the relationship of “documents” to
“pages.” It seems safe to assume that 45, 000
documents would translate to less than 10% of the 8, 000, 000
pages already produced. I find that Boehringer's search
requests satisfy DDSD 5(b).
custodians, it is AbbVie that seeks to limit the number of
custodians to be searched, rather than Boehringer who seeks
to add to the list of custodians to be searched, as in
Fort Worth. Boehringer points to plausible reasons
to believe that AbbVie's proposed restriction of the
search to “inventor” custodians will miss
relevant documents. BI Mot. at 3. I will not limit the
find that Boehringer's search terms comply with the more
general requirements of Fed. R. Civ. Pro. 26(b)(1). 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. I will enter the order proposed by Boehringer
in its reply.
 DDSD 5(b) provides as follows:
Search methodology. 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 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
 The particulars of the search terms in
dispute are set out in Exhibit A to Boehringer's