The Ethics of Discovery
This session will discuss practical and ethical issues relating to discovery in patent infringement litigation in federal district court. We will will cover many topics including:
Be Prepared for Rule 26(f) Conference
- Know how your client maintains potentially relevant documents such as emails, shared file systems, repositories, hard copies, chat and messaging systems and cell phones. This means sit with the client in person or virtually so that you have seen it with your own eyes, understand it and can discuss it.
- Know that your client has a legal hold in place – not just that it was issued, but that it is actually in place and that custodians and the responsible person with their “IT” knows how to comply. (Heard in the ITC panel yesterday about the importance of the Legal Hold being in place, but more importantly that the client and all of the custodians know what it is, how it works and the importance of it – and the severe consequences of not complying with it.)
- Be familiar with court’s orders, local rules, and how they can be modified for the needs of specific matters. How are the different technologies such as email, texts, social media, and intranet handled?
Collection of Documents – Do it properly – allowing clients to self-collect without any supervision in not appropriate be familiar with client’s search capability; collect with discovery requests/requirements in mind — AND what your team needs to represent your client
Discovery Responses — Be specific in written objections/responses – Boiler plate objections are long gone; timely update disclosures (persons with knowledge); rogs (bates numbers, supplemental information from depositions, productions), RFPs (objections/responses – as production move forward); identifying 3rd party confidentiality issues and working with 3rd parties to give notice/get permission to produce early — talk with opposing side to make sure they are doing the same
Search Terms – Talk about this at Rule 26 Conference, is Email even appropriate in your matter – if so – is limited Email appropriate. Some discovery orders/esi order require working together, some put the “burden” on producing party to identify the custodians/search terms once requesting party identifies the issues; some require requesting party to ID custodians and search terms on their own – determine what makes sense — game playing costs client more time and money.
Document Review (relevance and privilege) – Have a game plan; have a review protocol that tells the review team the issues, provides examples of relevant and not relevant documents; provides guidance on the privilege issues to ensure privilege is preserved. Regardless if using team members or outside review team (contract attorneys) – you are responsible for supervising them. (There is a whole hour here on best practices — key is make sure the review team has the knowledge they need and that they are supervised by a team member with knowledge.)
Privilege Logs – Talk about what’s appropriate to the case – agree to limit logs to certain custodians or topics where you need a privilege log – find a way to identify the person who makes the entry privileged – sometimes the names on the email or the author do not make it readily apparent to the party receiving the log — if the privileged name is further down the email chain – or sender/author is acting at the direction of counsel
Constant formal Meet and Confers should not be necessary – Keep lines of communications open on discovery issues.
Avoid Pelican/Pigeon Behavior – have team members negotiating discovery obligations who know what the client wants, can comply with and how quickly, and even if you need to confirm some issues with client/team — once there are parameters/agreements — can’t have a team member constantly torpedoing agreements These agreements are usually memorialized in letter writing campaign/email exchanges —- can’t have days later — NOPE – I want X, Y, Z….don’t what was agreed to.
Productions – Need to comply with Production Specifications (metadata, load files, format of documents) NO Data Dumps on the eve of a deadline; game playing with obviously responsive/relevant documents – negotiate early on what’s responsive — if can’t agree – take it to the court — prior litigation documents, license agreements, negotiation documents (especially between the parties)
Discovery Deadlines (Fact Discovery/Expert Discovery)– Don’t ignore discovery requests, requests for deposition dates and then expect the opposing side to accommodate you with triple tracking during the last week of discovery