In what had to qualify as one of their worst days at the office ever, attorneys for Qualcomm learned last month that failing to produce electronic evidence can really make life unpleasant—for their client as well as for themselves.1

Specifically, in early August 2007, a Federal Judge for the Southern District of California held that several Qualcomm patents should be rendered invalid as to the world (not just the defendant) based in part on the failure to produce about 200,000 pages of emails and other juicy documents until 4 months after trial. Qualcomm Inc. v. Broadcom Corp. (05-CV-1968-B) .

The existence of key evidence for Broadcom came out through testimony from one of Qualcomm’s last witnesses at trial, Viji Raveendran, who let the cat out of the bag right on the stand:

Q [by Broadcom counsel]: Did you receive mailings from the [JVT] ad hoc committee identified in this exhibit?

A: During the preparation for this testimony, there were some e-mails pulled out of my e-mail box. E-mail archive.

Q: Were they produced to Broadcom?

A: I don’t know.

Of course, it turned out that they weren’t produced. And they were key to Broadcom’s affirmative defense—that the company had been active with the standards committee.

The suggestion that emails had been pulled from the files before production had to be music to opposing counsel’s ears. After three months of legal wrangling following the trial, they succeeded in forcing the production of not just these emails but another two hundred thousand relevant documents that had not previously been produced.

Learning of the additional evidence, the court went through the roof. After affirming its earlier order invalidating Qualcomm’s patents, the Court ordered that Qualcomm pay all of Broadcom’s litigation fees, which could exceed $10 million. It also ordered the attorneys to show cause why additional sanctions shouldn’t be imposed.2

Ouch. Hate when that happens.

In rendering its opinions, the court made serious allegations against Qualcomm’s attorneys, suggesting in unsubtle terms that they hid information from Broadcom from the beginning and then tried to use lack of evidence as a weapon, both in summary judgment and trial. As Law.com reported in early August, the court criticized

“Qualcomm's constant stonewalling, concealment and repeated misrepresentations" during discovery, scolded the company's "presentation of numerous witnesses who steadfastly testified falsely" and condemned its counsel, which "adamantly denied the obvious, and then, when the truth was discovered and exposed by the document production, sequentially contended denial of relevance, justification, mistake, and finally non-awareness."

I am not making this up. This could make for a good novel if not quite rising to the level of an action adventure.

Let’s take a look at what happened. Hopefully there are some lessons to be learned here and well as a few “not to dos.”

The Facts

Like any good technology company, Qualcomm has a number of patents which it jealously guards. In 2005 it brought a patent suit against Broadcom claiming that it was infringing two video-related patents. Broadcom alleged waiver as an affirmative defense, arguing that its products were based on the JVT (Joint Video Team) international standards. Broadcom went on to claim that Qualcomm waived its patent rights by participating in the standards process without disclosing that the resulting standard would violated existing patents.

Legal support for this argument can be found in Rambus Inc. v. Infineon Techs, 318 F.3d 1081, 1102-05 (Fed. Cir. 2003), which suggested that a party could not participate in a standards-setting process without warning parties that the proposed standard could set up patent claims.

Not surprisingly, Broadcom immediately served interrogatories and requests for evidence showing that Qualcomm “participated in the proceedings of the JVT, the ISO, the IEC, and/or the ITU-T (other standards setting bodies).”

In what could set a record for boilerplate objections, Qualcomm responded with the following to what seemed like simple and straightforward requests. I quote them here so you can grab them for your next discovery response.

QUALCOMM refers to and incorporates by reference each of the foregoing general objections as though each is set forth fully herein, including privilege and work product.

QUALCOMM further objects to the definition of “identify” to the extent it renders the interrogatories overly broad, unduly burdensome and/or would require QUALCOMM to provide information that is not within its possession, custody, and control and/or cannot be identified or located with a reasonably diligent search.

QUALCOMM objects to the purported requirement that it respond “in detail” as vague, ambiguous, unduly burdensome, overly broad, and requiring information not within its possession, custody, or control. In particular, it is unclear how much detail is requested, and QUALCOMM will respond only to the extent information is explicitly requested.

QUALCOMM objects to the term “Qualcomm Patent” as vague and ambiguous, and instead will refer to the “QUALCOMM Patents-in-Suit.”

QUALCOMM objects to the definition of “Person” to the extent that its definition is circular with respect to “Entity” and “entities.” “Person” is defined to include any “legal entity,” “government entity,” and “business entity.” “Entity” is defined to include “natural persons.” QUALCOMM will construe “Person” in accordance with its reasonable ordinary meaning.

QUALCOMM objects to the phrase “any standard relating to the further objects to the defined terms “standard” or “standards” as vague, ambiguous, overbroad, unduly burdensome and not reasonably calculated to lead to the discovery of admissible evidence; and to the defined terms “MPEG video processing” as vague, ambiguous, overbroad, unduly burdensome and not reasonably calculated to lead to the discovery of admissible evidence. QUALCOMM will construe those terms as stated in the general objections.

QUALCOMM objects to the term “relevance” as vague, overly broad, and neither relevant to the subject matter of this litigation nor reasonably calculated to lead to the discovery of admissible evidence.

QUALCOMM objects to the purported requirement that it respond as to the time period(s) at issue as vague, ambiguous, overly broad, unduly burdensome, and requiring information not within its possession, custody, or control.

QUALCOMM objects to the phrase “nature, purpose, effect, and sum and substance” as vague, ambiguous, overly broad, unduly burdensome, and requiring information not within its possession, custody, or control.

QUALCOMM objects to the phrase “participation and/or involvement” as vague, ambiguous, overly broad, and unduly burdensome.

QUALCOMM objects to the phrase “membership, participation, interaction, and/or involvement” as vague, ambiguous, overly broad, and unduly burdensome because the phrase “membership . . . in setting any standard” is impossible to parse.

QUALCOMM objects to the purported requirement that it identify “each” person, to the extent it calls for information that is not within QUALCOMM’s possession, custody, and control and/or that cannot be identified or located with a reasonably diligent search.

QUALCOMM objects to the purported requirement that it respond as to “standards raised but never adopted” as vague and to the extent it calls for information not within QUALCOMM’s possession, custody, and control and/or that cannot be identified or located with a reasonably diligent search.

QUALCOMM objects to the purported requirement that it identify the particular standard(s) that resulted from Qualcomm's involvement, to extent it calls for information that is not within QUALCOMM’s possession, custody, and control and/or that cannot be identified or located with a reasonably diligent search.

QUALCOMM objects to the phrase “relevance” in interrogatory 13(I) as vague, ambiguous, overly broad, unduly burdensome, calling for information that is not within QUALCOMM’s possession, custody, and control and/or cannot be identified or located with a reasonably diligent search, and neither relevant to any claim or defense at issue in this litigation nor reasonably calculated to lead to the discovery of admissible evidence. In particular, the basis for determining relevance is unclear, the interrogatory potentially requires a response that is virtually unlimited in scope, and it is unclear as to the entities from whose perspective relevance is to be determined.

QUALCOMM objects to the term “related” as vague, ambiguous, overly broad, and unduly burdensome, and neither relevant to any claim or defense at issue in this litigation nor reasonably calculated to lead to the discovery of admissible evidence.

After these lengthy objections, counsel responded but didn’t mention that a number of Qualcomm’s employees had actively participated in and were aware of the standard setting activities of the JVT as it related to these video patents.

The opinion going forward is a fun read, at least if you are not on the receiving end. For example, to find for Broadcom the court needed to make its findings based on “clear and convincing” evidence. To quote the court:

However, with the new evidence produced by Qualcomm post-trial, the Court FINDS well beyond clear and convincing evidence that Qualcomm participated in the JVT as early as January 2002, well before the release of the H.264 standard in May 2003. The evidence unequivocally contradicts Qualcomm’s assertions at summary judgment, during trial, and at the post-trial hearing on waiver and inequitable conduct that it did not participate in the JVT until after May 2003.

It went on to state:

However, faced with the additional evidence produced post-trial by Qualcomm, the Court concludes that the conduct of Qualcomm’s employees before trial, and its employees and hired witnesses during pre-trial, trial, and post-trial outlines misconduct even more extensive than the Court previously found in its March 21 Order.

In the court’s eyes, these documents provided clear and convincing proof that Qualcomm conspired to sandbag a standards body into creating a standard that would open participants to patent infringement claims like those Qualcomm was bringing against Broadcom.

Not stopping at a Qualcomm bashing, the court went on to take a whack at the attorneys:

The Court FINDS by clear and convincing evidence that Qualcomm 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.

At this point things went downhill fast. Try this one for starters:

The Court quotes the verbatim response submitted by Qualcomm counsel to Interrogatory No. 13 in Qualcomm’s Fourth Supplemental Response . . . because it demonstrates vividly the stonewalling denial and diversions of requests for evidence repeatedly directed to Qualcomm:

Or this:

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. 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 went on to hammer the attorneys for “gross litigation misconduct during motions practice.” The key here was the now unfortunate motion for summary judgment that was predicated on counsel’s representation that there was no evidence whatsoever to suggest that Qualcomm participated in the standards-setting process before the standards were set.

To quote the court:

The lynchpin of Qualcomm’s adamant and determined motions and arguments for summary adjudication was the claim that Broadcom had no evidence of JVT participation. Not surprising. Every attempt to obtain evidence, which as it came later to be revealed was voluminous and dispositive, had been repelled by Qualcomm by its steadfast denial of the existence of any evidence and the false denials of all factual allegations, both in its witnesses’ depositions and in its discovery responses. To then urge upon the Court that Broadcom had no evidence to support its position demonstrates the reason for calculated orchestration of a deliberate plan to conceal evidence in the case.

At this point the discussion turned to whether the discovery omissions were purposeful or represented an innocent mistake. The court had a hard time imagining how 200,000 or so documents might have been overlooked when a simple search would (and did in fact) find them. Specifically, after getting wind of the 21 initial emails that had been withheld, Broadcom’s counsel demanded that key PST files be searched again for about a dozen key terms. The quick result was about 200,000 additional responsive documents.

The Court finds it incredible that Qualcomm never conducted such an obvious search for these key terms in the email archives of these key Qualcomm witnesses during the many months of discovery that occurred before trial, since Broadcom clearly had requested all of it and more.

As a final show stopper, the court let the parties know that it read the newspaper from time to time. It was particularly interested in an article quoting the General Counsel’s spin on the subsequently-found documents.

In an interview with the San Diego Union-Tribune about this post-trial production, Mr. Lupin [Qualcomm General Counsel] reportedly stated that these newly discovered documents “‘on the whole’ bolstered Qualcomm’s arguments during trial” and that “‘[w]e kind of hurt ourselves’ by not finding them before trial.” . . . The Court finds, in sharp disagreement to Mr. Lupin’s characterization of the new evidence, that the documents in fact fully bolstered Broadcom’s waiver arguments and completely refuted Qualcomm’s waiver defenses at trial.

One could suggest Qualcomm consider a new PR firm or at least cut down on interviews with the local paper. I am sure it didn’t come out the way it was reported.

What can we learn from this?

So what can we learn from this? I am tempted to start with the obvious: Don’t withhold evidence!

But that would be too simple. This isn’t a close ethical call and every counsel passing the bar knows that holding back relevant evidence—whether paper or “plastic”—could cost you your license. What’s more it is a dangerous strategy even if you can get away with it in the short run.

Indeed, one of the first lessons you learn as a trial lawyer is to put the bad stuff on the table right away and deal with it openly. If the bad stuff is too bad, settle. Otherwise, admit it, explain it, and move on. Whatever you do, don’t ignore it and give your opponent a chance to stick it to you later. The jury (and the judge) will hate you for it if you do.

What really happened here? I feel certain that the lawyers would not have gone so far out on a judicial limb had they known there were 200,000 bombshells waiting to blow at any minute. Yet curiously one of the lead lawyers made the grudging admission (and I love this language) that

While perhaps “there was some fleeting mention of emails in my presence,” he was somehow “not cognizant that the emails from Ms. Raveendran’s archive had been identified” when he flatly asserted to the Court at sidebar on January 18 that no such emails existed:

[S]ince the issue of my knowledge [of the twenty-one emails produced on January 24] has been raised, I should add that I cannot completely exclude the possibility that, during those times that I was in the [co-counsel’s] trial preparation suites rather than my own firm’s, there was some fleeting mention of emails in my presence. What I can say with certainty now is that, when I told the Court on January 18, 2007 that there was no such emails in evidence, I was not cognizant that the emails from Ms. Raveendran’s archive had been identified.

Fleeting mention? Forgive me but what’s up with that? Did somebody say “Hey we’ve got a bunch of troubling emails here” as counsel was running by? Or maybe they yelled out of a car driving by quickly. Either way, that would have been a good time to stop and say “What’s that you say? or maybe even a meek “did I hear that fleeting remark correctly?”

You have to feel for that lawyer but doubletalk like that surely didn’t help matters. I learned long ago that if you have to fess up to something, you better do it in a straightforward way. Fleeting admissions probably won’t make the court feel kindly toward you.

If there was anything fleeting going on here, it was the seeming suggestion that some of the lawyers may have known about the bad evidence but kept that information from trial counsel. If this were the case, somebody better make a “fleeting mention” of this issue to their malpractice insurer.

Did some or all counsel realize that there was a proverbial ton of evidence contradicting their central defense to the waiver argument? If so, I can’t believe they would have continued. Email is hard to contain—it travels far and wide. I am surprised that Broadcom didn’t find copies of these killer emails in other mailboxes outside Qualcomm. More to the point, who in their right might would assume that Broadcom wouldn’t find other copies of this damning evidence? That’s not a bet I would have taken (even if I were willing to throw ethics out the window).

Another suggestion is that Qualcomm had the evidence and hid it. Certainly in the 20+ years I spent as a trial lawyer there were plenty of occasions where I relied on my client to produce responsive documents. Indeed, I can’t recall one occasion where I went to the client and demanded to make my own inspection. Rather, I trusted that my client (often the GC) would be diligent in secure all the good (and bad) documents relating to the case.

The problem with this hypothesis is that counsel apparently had the key PST files in their possession for at least some time. (PSTs are containers for email files.) At the least, they seemed to have the PSTs in their possession when they ran the 9 key-word searches demanded by Broadcom’s counsel.

Nevertheless, upon Broadcom’s threat to involve the Court, Qualcomm agreed to search the email archives of Qualcomm witnesses … for the search terms “JVT,” “Joint Video Team,” “AVC,” “Advanced Video Coding,” “H.264,” “H264,” “MPEG-4 Part 10,” “MPEG4 Part 10,” and “Gary Sullivan.”

When relevant documents surfaced from the searches, the Court found it “incredible that the attorneys never conducted such an obvious search for these key terms in the email archives of these key Qualcomm witnesses during the many months of discovery that occurred before trial, since Broadcom clearly had requested all of it and more.”

If counsel had the PSTs during discovery, which wouldn’t be unusual, it is hard for me to make the case that their client failed to be thorough. Once you receive the PST file, you (or an outside vendor) should split the PST into individual email files and attachments. At that point you could either review the individual messages or run searches on the contents to make sure you didn’t miss anything relevant.

Ultimately I find myself at a loss to explain this one. Somebody messed up here and I just can’t make much sense of it. There were a lot of talented lawyers involved in this matter and I feel certain they didn’t conspire over something as crazy as this. How did it happen? Beats me.

Well then, what can we on the outside learn from this? If you are on the legal team, you better take control of your electronic discovery right from the start. If the lawyers didn’t run simple key word searches across the electronic files—and apparently didn’t review the documents individually—what were they thinking? And, if you are in the GC’s office, you might want to retain an outside expert to watch over the collection and extraction process to make sure it is handled properly. If key steps in the process were missed, having an outsider to watch over the process could be worth just about whatever it cost.

At the least, inside and outside counsel better be thinking when the next case like this comes in. If your budget doesn’t support individual review all you documents, get an expert to run searches across the population and make sure you review what comes out. If you don’t, you may be looking down the wrong end of the judicial sanction barrel yourself.

For what its worth, these kinds of problems should be easy to avoid. There are a lot of programs that will allow you to search and extract messages from PST files, whether you do it yourself or outsource it. And, you can find experts who will help you frame and run these kinds of searches. It doesn’t take long and it isn’t that expensive.

If that had happened and the evidence had come out at the beginning of the case, Qualcomm may have had to drop its claims. That might be unfortunate but at the least, it would have made for a better day at the office.

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¹ I am not going to identify the attorneys in this column although that is a matter of public record. Having practiced in a similar firm for 20+ years I get no pleasure in “piling on” to what must already be a bad situation. Moreover, I know from experience that there are always two sides to every story and I only have the court’s opinion to go on for this column. In fact, while the attorneys have been ordered to file pleadings explaining what happened, the pleadings are presently not available to the public because they contain privileged information.

At bottom, it is hard to imagine that attorneys practicing at that level would intentionally make the statements they did knowing they were false. It is not just a question of ethics, you would be a fool as a trial lawyer to put yourself out with statements that could so easily be disproved. One thing I know is that lawyers practicing at that level are not stupid.

At the risk of making this footnote longer than the entire column, let me say the same about Qualcomm. While I haven’t met any of the players in this case, I can tell you that people don’t rise to the rank of senior counsel at companies like Qualcomm easily. I can’t imagine anyone at Qualcomm intentionally hiding this kind of evidence from the lawyers either. It just isn’t worth it.

² The sanctions hearing is in process as of this writing and presents some interesting side issues. The attorneys have asked that the court waive privilege to let them explain their side of the story. Qualcomm retained separate counsel and has refused to waive privilege. I could write a separate column about how to resolve those kinds of issues.