Electronic Discovery in Intellectual Property Cases

• Author: Jennifer R. Martin
• Profession: Symantec Corporation
• Pages: 15-35

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CHAPTER 2

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

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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,

1

it is well

Volume

Records

Management Identification

Preservation

Collection

Processing

Review

Analysis

Production Presentation

Relevance

FIGURE 2.1 Electronic Discovery Reference Model

16 Intellectual Property Operations and Implementation