By Mary Mack, Esq.

Many opinions have been written regarding the Qualcomm v. Broadcom case. The Federal Court has two main authors, Federal Court Judge Rudi Brewster and Magistrate Judge Barbara Major. Newspapers, magazines, blogs and conferences host many other authors.

This is a patent case that focused on Qualcomm's involvement with a technical standards body and turned on decisions and representations about e-mail evidence production. In the final hours of testimony, a witness disclosed that outside counsel had removed germane e-mails from her computer. These e-mails were the subject of court and counsel discussions and the witness contradicted counsel.

The judge decided against Qualcomm, awarded costs and attorneys fees and sent certain outside counsel to Magistrate Judge Barbara Major for consideration of sanctions. Judge Major sent a subset of outside counsel to the California State Bar for disciplinary procedures and mandated a comprehensive Case Review and Enforcement of Discovery Obligations (CREDO) root cause analysis and remediation protocol. After appeal, Judge Brewster vacated the sanctions against the individual attorneys, allowing privileged material to be used by the outside counsel to defend itself. The re-hearing and CREDO process are ongoing and will continue to evolve.

Here are the top lessons gleaned from this case regarding electronic discovery:

1. Communication is critical. Have robust communication channels among organizations and organizational strata. The hot documents were identified by an entry level associate, raised to the partner level and potentially not disclosed to trial counsel.
2. Run down the red flags in real time. The hot docs could have been considered and mitigated had they been searched and vetted by senior attorneys when the standards issue (and welcoming e-mail) turned up in a deposition.
3. Put your best foot (expert) forward. Make sure your "person most knowledgeable" can answer basic questions about their particular subject. In this case, a second "person most knowledgeable" was served up to repeat denials in the face of the hot email discussed in Lesson number two.
4. Read engagement letters thoroughly. In the wake of Qualcomm, firms will be asking for advance waivers of privilege if they find themselves under sanctions threat. Companies hiring attorneys will be asking for commitments not to seek to waive the privilege under those circumstances.
5. Understand the ethical obligations in your state. It is difficult to please everyone – senior partners, clients, courts. Make sure you are on the right side of the line. It is difficult to do that unless you know where the line is.
6. Read work done by others first. Before signing pleadings or filings prepared by others, read them. Independently verify that they are true. This does not mean do the work again, but it does mean having a reason to trust, or at the very least no reason to distrust, the contents of the filing.
7. Review your ESI identification protocols. If you do not understand the preceding sentence, educate yourself on what electronically stored information (ESI) means under the Federal Rules of Civil Procedure and many state courts. ESI, which is just about everything on a computer or internet, is stored on various servers and in various applications inside and outside the corporate network. Understand how your client or organization stores this information, and then dig to find out where the ESI is really stored. Qualcomm produced hundreds of thousands of pages of documents after trial, in part, because they missed a server where a key group stored documents.
8. Educate your trial attorneys on the electronic discovery process. They may find themselves (as the outside counsel for Qualcomm did) in front of the bench being asked about particular documents. If your counsel understands and can communicate a coherent process, it will demonstrate good faith, even if there was a glitch in the process.
9. Rely on outside experts. When splitting legal hairs around technology, seek outside opinions. One of the assertions was that an e-mail to a distribution list (reflector list) that had the reflector list in the To: field was not really an e-mail to the person who received it. Distribution lists are in wide use in today's environment. In tomorrow's environment, it may be Twitter.
10. Allow service providers to do their role. While inside counsel understands the company better, they are understandably focused on narrowing scope and costs. Outside counsel, while perhaps sometimes overly cautious, generally understand what things look like from a judicial perspective. While inside counsel has ultimate responsibility for the case, the outside counsel has an important contribution to make in overseeing, validating, framing and vouching for productions or filings. Outside counsel needs to ask lots of questions and may require the expertise of an e-discovery provider to facilitate this process. Without it, a company may get blindsided in court.
11. Have a "go-to" person who understands law and technology. This person does not need to be educated on the basics and can get to the heart of an issue quickly. This person, also referred to as a Technology Counsel, can oversee the electronic discovery process, escalate legal and technology issues, and oversee and facilitate collaboration of discovery counsel, IT and trial counsel.