A federal judge’s decision castigating both attorneys and their client in the Qualcomm patent litigation highlights the potential for conflict between attorneys and their clients created by the new federal e-discovery rules. The e-discovery rules place great burdens on both counsel and clients to produce information stored in electronic form. Counsel has a duty to protect the client’s interest and to make sure that discovery complies with the rules. But what if the discovery doesn’t comply? When responsive electronic information is not produced, the interests of the client and counsel may come into conflict, with counsel attempting to shield herself from the wrath of the court by claiming that she was not made aware by her client of the existence of the responsive information.
These issues arose in the ongoing Qualcomm litigation, where, according to the court, counsel tried to fend off allegations of noncompliance by claiming that the client kept counsel “in the dark” about the existence of more than 200,000 pages of critical e-mails and electronic documents that were not produced in discovery.
Qualcomm unsuccessfully sued rival chip maker Broadcom for infringing several of its patents dealing with the transmission of video data under the H.264 standard. Broadcom counterclaimed, alleging that the patents were unenforceable due to waiver and inequitable conduct. At trial, the jury returned a unanimous noninfringement verdict in favor of Broadcom. In an advisory verdict, the jury also found that one of the patents was unenforceable due to inequitable conduct and both patents were unenforceable due to waiver. In its August 6, 2007 decision, the United States District Court for the Southern District of California (Brewster, J.), rejected the inequitable conduct finding but held that both patents were unenforceable due to waiver based on Qualcomm’s conduct before the Joint Video Team (“JVT”), the standards-setting body that created the H.264 video standard.
According to the court, the waiver issue turned on information about Qualcomm’s participation with the JVT that Qualcomm had originally not disclosed. The court found that Qualcomm had concealed “over two hundred thousand pages of emails and electronic documents that were finally produced four months after trial containing direct evidence that multiple representatives of Qualcomm participated in the JVT from the beginning, and that multiple Qualcomm witnesses knew of this participation even as they testified to the contrary at deposition and trial.” The court’s decision indicates that the possibility that this information existed only came to light during Broadcom’s cross-examination of a Qualcomm witness on one of the last days of trial.
According to the judge, “after over three more months of denials, refusals, and opposition, Qualcomm reversed its position, allegedly to avoid further dispute over the matter, and produced on April 13, 2007, over 110,000 pages of emails, company correspondence, and memoranda, and on May 15, 2007, over 120,000 more pages, some of which have now been filed with the Court, none of which have been disputed by Qualcomm.” The court found that Qualcomm had actively engaged in misconduct by concealing information from the court and opposing counsel. In support of this finding, the court pointed to, inter alia, e-mails that the court claimed evidenced Qualcomm’s actions before the JVT and contradicted testimony given under oath by Qualcomm personnel.
The court specifically concluded that Qualcomm’s counsel “participated in an organized program of litigation misconduct and concealment throughout discovery, trial, and post-trial before new counsel took over lead role in the case on April 27, 2007.” The court rejected counsel’s claim that Qualcomm had kept counsel in the dark about the existence of the e-mails and other documents. The court pointed to a letter in which, according to the court, Qualcomm counsel claimed that while perhaps “there was some fleeting mention of emails in my presence,” he was “not cognizant that the emails from Ms. Raveendran’s archive had been identified.” The court noted that counsel had previously told the Court during a sidebar that no such emails existed.
The court’s decision makes it clear that the court didn’t believe counsel’s protestations of innocence. The court stated that Qualcomm counsel’s discovery responses “demonstrate that they were able to locate with alacrity company records from December 2003 forward and find four or more Qualcomm employees participating in proceedings of the JVT. Yet inexplicably, they were unable to find over 200,000 pages of relevant emails, memoranda, and other company documents, hundreds of pages of which explicitly document massive participation in JVT proceedings since at least January 2002.” The court found that “these examples of Qualcomm counsel’s indefensible discovery conduct belie counsel’s later implied protestation of having been ‘kept in the dark’ by their client.” The court also referenced its finding that Qualcomm’s counsel, while preparing a witness for her testimony, “had stripped over fifty pages of emails regarding the JVT from her email archives.”
Given the difficulties inherent in locating and producing electronic information, the issues raised in the Qualcomm litigation may be a preview of things to come. The discovery dispute and the resulting court order certainly raise questions regarding the extent of counsel’s duty to investigate the existence of responsive electronic information, the potential conflict between counsel’s duties to the court and the client’s interests, as well as the circumstances under which counsel will be held responsible for a client’s failure to make electronic information available in discovery.
Citation: Qualcomm, Inc. v. Broadcom Corporation, No. 05-CV-1958-B(BLM), 2007 WL 2296441 (S.D. Cal. August 6, 2007).