[EDRM Editor’s Note: The opinions and positions are those of Michael Berman.]
In a dispute over search term counter-designations, the Special Master found that the ESI Protocol did not establish a milestone date, so none existed. Glaxosmithkline Biologicals SA v. Pfizer, Inc., 2025 WL 3098080 (D. Del. Nov. 6, 2025).
Plaintiff GSK alleged infringement of eight patents. The District of Delaware has a “Default Standard for Discovery” which stated:
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 paragraph 3(a).
Id. at *2 (emphasis added).
The Delaware “Default Standard” required “good-faith efforts….” Id.
Similarly, the ESI Protocol stated:
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.
Id. at *6 (emphasis added).
Defendants proposed search terms to plaintiff, GSK. However, instead of proposing “no more than 10 additional search terms,” GSK demanded that Defendants “make reasonable adjustments to [their] own search terms in the first instance.” Id. GSK also contended that it “lacks sufficient context to propose additional search terms because Defendants have not yet produced any internal-facing documents that would provide the information necessary for GSK to craft appropriate additional search terms.” Id. at *7.
Defendants moved for an order compelling GSK to propose terms “forthwith in compliance with the ESI Protocol.” Id. at *6 (emphasis added). Defendants relied on the ESI Protocol and moved “to compel GSK to propose up to 10 additional search terms to be used to locate potentially responsive ESI pursuant to the Protocol for Discovery, Including Discovery of Electronically Stored Information….”
Plaintiff, GSK, opposed the motion. “In response, GSK contends that Defendants’ motion should be denied because the ESI Protocol does not impose any time limits for it to propose additional search terms.” Id. at *7 (emphasis added). “GSK maintains that it intends to provide additional ESI search terms to Defendants well in advance of the fact discovery and substantial completion of document production deadlines, so as to allow Defendants a reasonable opportunity to collect, review and produce responsive documents.” Id.
GSK maintains that it intends to provide additional ESI search terms to Defendants well in advance of the fact discovery and substantial completion of document production deadlines, so as to allow Defendants a reasonable opportunity to collect, review and produce responsive documents.
Glaxosmithkline Biologicals SA v. Pfizer, Inc., 2025 WL 3098080 (D. Del. Nov. 6, 2025).
The Special Master agreed with GSK, writing:
Defendants’ motion to compel GSK to propose up to 10 additional search terms pursuant to the ESI Protocol is DENIED. The Special Master does not find Defendants’ motion in this regard persuasive because, as GSK correctly notes…, the ESI Protocol does not set a specific time or deadline for a requesting party to propose additional search terms, nor does it require that such terms be submitted immediately or at the producing party’s demand.
The Special Master also does not find it unreasonable for GSK to wait to propose additional search terms until it receives documents from Defendants that it deems necessary to formulate them, particularly given that the deadline for substantial completion of document production is not until March 25, 2026…, and GSK’s counsel’s represents that it intends to provide additional ESI search terms to Defendants well in advance of the fact discovery and document production deadlines.
Id. at *7.
While it seems reasonable to conclude that, in the absence of a milestone, performance must only be within a reasonable time, the triggered “duty” is that the “requesting party may request no more than 10 additional terms….” [emphasis added]. That permissive language does not seem to compel a requesting party to do anything. At most, if it does not act within a reasonable time, it may waive its permission to request no more than 10 additional terms.
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