Qualcomm Incorporated, v. Broadcom Corporation
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U.S. Federal Court Rules of Civil Procedure –
amended rules December 1, 2006 to include
electronically stored information.
Rule 26 – Generally
Rule 26 (f) – any motion to compel disclosure
or discovery must be accompanied by a
certification that the movant has in good
faith conferred in an effort to secure the
disclosure or discovery w/out court action.
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1. CONFERENCE TIMING
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2. CONTENT; PARTIES RESPONSIBILITIES
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3. DISCOVERY PLAN
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4. EXPEDITED SCHEDULE
1. CONFERENCE TIMING
1.PARTIES MUST CONFER AS SOON AS POSSIBLE
2. AT LEAST 21 DAYS BEFORE SCHEDULING DAYS OR
SCHEDULING ORDER IS DUE.
3. ATTORNEYS OF RECORD AND ALL
UNREPRESENTED PARTIES THAT HAVE APPEARED
IN THE CASE ARE JOINTLY RESPONSIBLE FOR
ARRANGING THE CONFERENCE
2. CONFERENCE CONTENT; RESPONSIBILITIES
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Consider nature/basis of claims and defenses
Discuss possibilities for promptly settling or resolving
case
Develop a proposed discovery plan
Good faith effort to comply with plan
Submitting written report outlining plan to court within
14 days
Court may order parties or attorneys to attend the
conference in person!
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3. DISCOVERY PLAN
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(A) Includes timing, form, or requirement for disclosures;
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(B) statement of when initial disclosures were made or will be made
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(C) the subjects on which discovery is needed,
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when discovery should be completed, and whether discovery should be
conducted in phases or be limited to or focused on particular issues;
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( D) form or forms in which it should be produced.
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(4) EXPEDITED SCHEDULE
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Court may mandate if necessary:
 (A) require the parties' conference to occur less than
21 days before the scheduling conference
 (B) require written report outlining the discovery plan
to be filed less than 14 days after the parties'
conference, or excuse the parties from submitting a
written report and permit them to give an oral report.
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Qualcomm Incorporated v. Broadcom Corporation.
United States District Court, S.D. California
Qualcomm initiated patent infringement action
against Broadcom for infringement of two different
patents.
 Broadcom asserted waiver defense stating
Qualcomm participated in (JVT )Joint Video Team in
2002-2003.
 JVT is a standards-setting body related to the patents
at issue.
 Qualcomm denied participation and presented
witnesses who testified that Qualcomm had never
been involved in JVT.
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Qualcomm attorneys failed to make reasonable
inquiry and search witnesses computers for relevant
documents or emails.
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Qualcomm moved for summary judgment – stating
lack of evidence establishing involvement.
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Qualcomm moved for motion in limine to exclude
evidence of participation
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At trial on cross exam – Q witness Viji Raveendran
admits to receiving e-mails regarding JVT
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Qualcomm forced to provide 21 e-mails found on
witness’ computer prior to trial.
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Jury returned verdict in favor of Broadcom
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Broadcom’s attorneys orally move for sanctions against
Qualcomm
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Qualcomm notifies D.C. it discovered over 200,000
pages of relevant emails, memoranda, and company
documents proving participation since at least January
2002.
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United States Magistrate – Judge Barbara Major
concludes that:
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1. Qualcomm withheld tens of thousands of decisive
documents intentionally to win case and to gain a
strategic advantage.
2. Judge further concluded that attorneys played a
role in withholding information
3. Judge refers 6 Qualcomm attorneys to the State Bar
of California
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Judge sanctions Qualcomm 8 million dollars,
and in addition awards Broadcom all attorney
fees and costs incurred in the litigation!!!
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Judge Major is unhappy with lack of
communication between client-attny and between
junior counsel and senior counsel for Qualcomm!
Orders meet and confer process – 26 (f)
Orders to immediately produce ESI documents in
an searchable format.
Judge sets up telephonic, attorneys-only
conference for December 4, 2008 at 2:00 pm.
Qualcomm is further directed to make
arrangements to initiate the call.
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How then, in a world dominated by electronic
data stored on laptops, PDAs, personal
computers, employer servers, Internet
servers, etc., do you comply with the “meet
and confer” process and the 'reasonable
inquiry' disclosure obligations imposed by
Rule 26?
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Communication – meaningful discussion with client and
other attorneys; keep all well informed
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Take control of document production
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Create discovery plan; Due diligence in choosing reliable
e-discovery vendor.
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Produce well-reasoned strategy/collaboration with evendor and opposing counsel in production.
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Counsel should closely monitor process
Be proactive.