Electronic Discovery in Intellectual Property Cases

AuthorJennifer R. Martin
ProfessionSymantec Corporation
C02 09/02/2011 12:24:15 Page 15
Electronic Discovery in Intellectual
Property Cases
Jennifer R. Martin
Symantec Corporation
Company servers, databases, person al computers, backup tapes, handheld de-
vices, and, most recently, the Internet ‘‘cloud’’ can contain a treasure trove
of compelling evidence relevant in every type of investigation or litigation mat-
ter, big or small, criminal or civil. The information explosion and the concomi-
tant escalation of costs associated with handling data during litigation is cause
for significant concern among corporate litigants, in-house and outside counsel,
and the judiciary, among others, and has resulted in untold numbers of confer-
ences, workshops, articles, and legislative proposals to address the problems as-
sociated with electronic discovery. Indeed, growing litigation costs, coupled with
concerns over the efficacy of current e-discovery practices and the gamesman-
ship of the parties during the discovery phase, have, in recent years, driven the
evolution of the law in this area, and have arguably resulted in some dramatic
paradigm shifts in long-standing notions governing the ‘‘adversarial process.’’
Failures by parties to meet their discovery obligations also have resulted in seri-
ous sanctions against companies and sometimes their counsel for the resulting
spoliation of evidence. Accordingly, it behooves all attorneys to stay abreast of
the legal developments and their professional obligations in this area, and the
very serious consequences that can result from a misstep during the electronic
discovery phase. In addition to understanding their litigation obligations, how-
ever, smart litigants should also begin to think strategically about how best to
economically and intelligently manage, store, and organize information relevant
in their practice areas prior to litigation ever commencing.
This chapter provides an overview of the electronic discovery process for
parties and their lawyers to prepare in advance for the electronic discovery phase
of litigation. The key electronic discovery holdings and rules discussed herein ap-
ply to all types of cases; however, the information is presented within the context
C02 09/02/2011 12:24:15 Page 16
of intellectual property (IP) litigation. In addition, to the extent possible, essential
e-discovery concepts and issues are illustrated through discussions of key IP
cases; notably, many of the most important recent judicial holdings in this area
have arisen in the context of contentious IP battles. This chapter also discusses
some of the current legal and judicial trends intended to mitigate the mounting
costs of electronic discovery.
Electronic Discovery Process
Although the electronic discovery life cycle, as described pictorially in Figure 2.1,
really begins with managing information so that it is easily identified once a party’s
litigation obligations are triggered, the focus of this chapter is on parties’ responsibili-
ties during the discovery phase of litigation. As discussed more fully at the end of this
chapter, however, many of the problems and concerns associated with electronic
discovery can be mitigated through smart information management before litigation
arises. From organizing data so that it is easily identified and collected, to destroying
data that serves no useful business or legal purposes, an organization’s decisions and
policies governing the retention of info rmation for business or other purposes will
play a critical role in implementing cost-effective, defensible procedures during elec-
tronic discovery. Thus, the last section of this chapter provides some recommenda-
tions for managing information in the IP context.
Routine data retention and destruction policies necessarily change once litiga-
tion arises. By way of background, the Federal Rules of Civil Procedure, particularly
the 2006 amendments addressing electronically stored information, provide the basic
road map governing the electronic discovery process during litigation. In recent
years, courts throughout the country have supplemented those rules through several
key decisions that lay out a more comprehensive legal framework for conducting
electronic discovery.
Trigger Event: Anticipation of Litigation
Although the Federal Rules of Civil P rocedure do not explicitly spell out wh en the
duty to preserve electronic information for litigation purposes is triggered,
it is well
Management Identification
Production Presentation
FIGURE 2.1 Electronic Discovery Reference Model
16 Intellectual Property Operations and Implementation

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