Ethical issues in discovery and lessons to be learned from discovery-related decisions like Qualcomm v. Broadcom

1. ETHICAL ISSUES IN
ELECTRONIC DISCOVERY:
LESSONS FROM QUALCOMM
BY:
KIRBY DRAKE

2. Overview
• Background of Qualcomm v. Broadcom
• Lessons to be Learned
• Lessons for All
• Lessons for Outside Counsel
• Lessons for Clients
• Lessons for Courts and the State Bar

3. Qualcomm v. Broadcom Timeline
Qualcomm sues
Broadcom for
patent
infringement
Broadcom requests
discovery on
Qualcomm’s
participation in the JVT
Qualcomm
repeatedly denies
involvement in the
JVT during relevant
time frame
Qualcomm files
motion for
summary
judgment on
waiver defense
Broadcom defense –
waiver by
participation in the
JVT
Trial
begins

4. Qualcomm v. Broadcom Timeline
Trial begins Trial witness forced to
admit existence of
emails on cross
examination
Judge orders
production of
documents and jury
finds in favor of
Broadcom on waiver
Broadcom sought
discovery on
scope of
discovery abuses
Qualcomm attorney
discovers email showing
trial witness
communicated with the
JVT
Judge
sanctions
Qualcomm and
6 outside
counsel for
discovery
abuses

5. Qualcomm v. Broadcom - Sanctions
• Qualcomm ordered to pay $8,568,633.24
• Six outside counsel referred to the State Bar of
California for investigation of possible ethical
violations
• Qualcomm and outside counsel ordered to
participate in Case Review and Enforcement of
Discovery Obligations (“CREDO”) program

6. Qualcomm v. Broadcom – Sanctions for Most But Not
All
• Several outside counsel never sanctioned
because of steps taken to confirm accuracy of
facts
• Reviewed deposition transcripts and discovery
responses
• Circulated drafts of pleadings to more senior in-
house and outside counsel
• Investigated the facts surrounding the JVT

7. “He who must search a haystack for a
needle is likely to end up with the attitude
that the needle is not worth the search.”
Brown v. Allen, 344 U.S. 443,537 (1953)

8. Lessons to be Learned from
Recent Discovery-Related Decisions
Lessons for All
Lessons for Courts and State Bar
Lessons for Outside Counsel
Lessons for Clients

9. Lessons for All:
1. The Truth Matters
• Often see failure to fully
adhere to the principle of
telling the truth
• Failure to admit when
wrong when it comes to
discovery issues
• Party and its outside
counsel often suffer the
consequences - sanctions

10. Lessons for All:
1. Do Not Tell a Lie
• Know the whole truth
• Make accurate representations to the other side as
well as to the judge and to the jury
• How?
• Find responsive information and produce it
• Make the team aware of responsive information early
• Allow witnesses/counsel to be prepared to face truth
about existence and contents of responsive information
before trial

11. Lessons for All:
2. Err in Favor of Production
• If you have to consider whether to produce,
probably should go ahead and produce it
• Often less harmful to produce
• Information may be responsive and discoverable
but not necessarily admissible
• Courts tending toward requiring production if
responsive to a party’s claims or defenses

12. Lessons for All:
2. Err in Favor of Production
Almost never incur wrath of
Court by producing (except
if it looks like a “document
dump”)
But feet can be held to the
fire for failure to produce
responsive information

13. Lessons for Outside Counsel:
3. Taking Responsibility for Ensuring Client Compliance with
Discovery
• Cannots
• Musts

14. Lessons for Outside Counsel:
3. Taking Responsibility for Ensuring Client Compliance with
Discovery
• CANNOT blindly rely on client’s collection and
production
• CANNOT blindly trust what client describes as
“standard” procedures for approaching discovery
issues
• CANNOT shield eyes from seeing certain
documents – must challenge clients regarding
search and collection strategies

15. Lessons for Outside Counsel:
3. Taking Responsibility for Ensuring Client Compliance with
Discovery
• MUST reach agreement as to how to engage in
discovery process
• MUST have sufficient control over discovery
process
• MUST gain access to locations where responsive
data may be maintained
• MUST take steps to confirm compliance by key
custodians – interviews, written questionnaires,
etc.

16. Lessons for Outside Counsel:
3. Taking Responsibility for Ensuring Client Compliance with
Discovery
“The Committee’s concerns are heightened in this age of
electronic discovery when attorneys may not physically
touch and read every document within the client’s
custody and control. For the current ‘good faith’
discovery system to function in the electronic age,
attorneys and clients must work together to ensure that
both understand how and where electronic documents,
records and emails are maintained and to determine how
best to locate, review, and produce responsive
documents. Attorneys must take responsibility for
ensuring that their clients conduct a comprehensive and
appropriate document search.”
Fed. R. Civ. P. 26(g) Advisory Committee Notes

17. Lessons for Outside Counsel:
4. Document Your Discovery Efforts
• Keep a record of efforts with regard to document
search and collection
• Can potentially use record to defend discovery
efforts should a discovery dispute arise
• May need to seek agreement from client that
documentation of actions taken may be disclosed
if issues arise as to sufficiency of discovery efforts

18. Lessons for Outside Counsel:
5. If You Don’t Have a Plan, Make One
• MUST define who is responsible for ensuring discovery
duties are carried out
• MUST get IT personnel involved
• MUST issue document hold or preservation notice at
outset of litigation
• MUST inform employees that they have a duty to
manage information in accordance with written policies
– litigation or not
• MUST consider investing in management
technology/search tools

19. Lessons for Outside Counsel:
6. If You Have a Plan, Adhere to That
• Qualcomm allegedly had a plan in place for
collecting documents in response to discovery
requests
• Despite having plan, Qualcomm apparently did not
fully follow the plan
• MUST follow your plan – plan is only as effective
as care given in executing plan

20. Lessons for Outside Counsel:
7. Compliance Programs/Modify Rules
• CREDO Program
• Identify facts that contributed to discovery violation
• Create and evaluate procedures to correct deficiencies
• Develop and finalize protocol to prevent future violations
• Modifications to State Discovery Rules
• Consider state-promulgated electronic discovery rules
(i.e., California)
• Balance burdens/needs of requesting party and
producing party

21. Lessons Learned