Transcript Qualcomm Inc. v. Broadcom corp. No. 05 Civ. 1958, 2008 WL

Qualcomm Inc. v. Broadcom Corp.,
No. 05 Civ. 1958, 2008 WL 66932 (S.D. Cal. Jan. 7,
2008)
“A monumental
and intentional discovery
violation”
Presented by: Jordan Green
The Parties

Qualcomm Inc.
 Initiated patent infringement suit saying patent
104 and 767 were infringed because Broadcom
manufactured, sold, offered to sell H.264 compliant
products, Qualcomm wants injunctive relief,
compensatory damages, and attorney's fees and costs

Broadcom Corp.
 Allegedly infringed Qualcomm's patents, but they say
the 104 patent is unenforceable due to inequitable
conduct and asserts an affirmative defense that both
patents are unenforceable due to participation in the
"Joint Video Team" ("JVT")
The Set Up

Broadcom made an oral motion for
sanctions after Qualcomm witness Viji
Raveendran testified about e-mails not
produced during discovery. The court
ordered Qualcomm to show why
sanctions should not be imposed against
Qualcomm's retained attorneys
The Facts

The JVT is the standards setting body that created the H.264 standard,
released in May of 2003. The H.264 standard governs video coding.

The Discovery request at the heart of the matter:

"Qualcomm will produce non-privileged relevant and responsive documents describing
Qualcomm's participation in the JVT, if any, which can be located after a
reasonable search."

Qualcomm says Christine Irvine is the most knowledgeable employee
about the JVT, her computer is not searched and she falsely testifies that
Qualcomm was never involved in the JVT. Strike 1.

Qualcomm then says that Scott Ludwin is the most knowledgeable
employee about the JVT, his computer is not searched and he testifies
falsely that Qualcomm only began participating in the JVT after the H.264
standard was published. Strike 2.
The Facts (cont.)

21 e-mails are found that discuss the H.264 standard,
the e-mails are from November of 2002, thus the emails undermine their argument they did not
participate in JVT until late 2003. Attorney's
ignore this fact. Strike 3.

Qualcomm even went so far as to move for summary
judgment based on the fact that they did not
participate in the JVT until late 2003.

The bottom line is that Qualcomm failed to produce
46,000 incriminating e-mails.
The court is angry
Clear and convincing evidence
Qualcomm intentionally engaged in
conduct designed to prevent Broadcom
from learning Qualcomm participated in
the JVT during the time H.264 was being
developed
 Inconceivable that Qualcomm was
unaware of its involvement in the JVT and
of the existence of the e-mails

The Legal Framework

This case applies the sanction provisions in the
Federal Rules of Civil Procedure with respect to
discovery

Rule 30(b)(6): An organization has an obligation to
conduct a reasonable investigation and review to
ensure a witness does possess the organization's
knowledge.

Rule 37 (c)(1): the court may prevent [a] party from
using…evidence at trial or at a hearing and impose
other appropriate sanctions, including the payment of
attorney's fees.
The Legal Framework (cont.)

Rule 26(e): Supplementing Disclosures and Responses
 (1) In General. A party who has made a disclosure under Rule
26(a)--or who has responded to an interrogatory, request for
production, or request for admission--must supplement or
correct its disclosure or response:
 (A) in a timely manner if the party learns that in some material respect
the disclosure or response is incomplete or incorrect, and if the
additional or corrective information has not otherwise been made
known to the other parties during the discovery process or in writing;
or
 (B) as ordered by the court.
 (2) Expert Witness. For an expert whose report must be
disclosed under Rule 26(a)(2)(B), the party's duty to supplement
extends both to information included in the report and to
information given during the expert's deposition. Any additions
or changes to this information must be disclosed by the time
the party's pretrial disclosures under Rule 26(a)(3) are due.
The Legal Framework (cont.)

The court determines reasonableness in
light of the totality of the circumstances
with respect to rule 26(g)(2)
E-Discovery Perspective

The overall take away from an Ediscovery perspective is that courts are
not going to tolerate a failure to meet
discovery obligations. If an attorney fails
to meet their discovery obligations by
hiding materials they will be sanctioned as
they were in this case. The “paradigm
shift” seems to be at play in this case.
E-Discovery Issues
 Main
issue: Whether the attorneys
can/should be sanctioned for failing to
produce the e-mails
 What are the ethical obligations of counsel and
corporate clients?
 What are the discovery obligations of counsel and
corporate clients?
 What is the requisite "reasonable inquiry" required
by Rule 30 of the Federal Rules of Civil Procedure?
Conclusion/Outcome

Qualcomm can't enforce the 104 and 767 patents nor their continuations,
continuations in part, divisions, reissues, or any other derivatives of either
patent

Qualcomm ordered to pay $8,568,633.24 to Broadcom for its
"monumental and intentional discovery violation"

The offending attorneys are sent to Case Review and Enforcement of
Discovery Obligations ("CREDO") program; the judge emphasizes that a
detailed analysis of 6 points is required [see text pp. 440-41]
 Identifying the factors that contributed to the discovery violation
 Creating and evaluating proposals, procedures, and processes that will correct
deficiencies
 Developing and finalizing a comprehensive protocol that will prevent future
discovery violations
 Applying the protocol developed
 Identifying and evaluating data tracking systems, software, or procedures that
corporations could implement to better enable inside and outside counsel to identify
potential sources of discoverable documents
 Any other information or suggestions that will help prevent discovery violations
Conclusion/Outcome
Qualcomm’s retained attorneys had a
duty to conduct a reasonable inquiry into
the accuracy of his statement before
telling the court the e-mails did not exist
 Kleinfeld and Tucker do not get
sanctioned; But they signed as local
counsel pleadings that contained false
statements…inconsistent?

Questions
 Do
you think this case functions as a road
map to assist counsel and corporate
clients in complying with their ethical and
discovery obligations and conducting the
requisite "reasonable inquiry"?
 Should
the court have sanctioned all the
attorneys? Maybe even none of the
attorneys? (see n.10 at 436)
Epilogue

Vacated in part by Qualcomm Inc. v.
Broadcom Corp., 2008 WL 638108, 88
U.S.P.Q.2d 1169 (S.D.Cal. Mar 05, 2008)