MBHB Snippets: Review of Developments in Intellectual Property Law - Winter 2013 - Volume 11, Issue 1: Conducting Efficient Patent Litigation Discovery, Part 2

by McDonnell Boehnen Hulbert & Berghoff LLP
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The costs associated with discovery, and particularly electronic document discovery, in patent litigation can be effectively controlled with upfront planning, preparation, and coordination between in­house and outside counsel. Presented in this second part of a two-part article are some practical considerations for conducting efficient document collection and review. In the first part of this article, published in the Fall 2012 issue of snippets, early collection activities and agreements with opposing counsel were discussed. In this second part, developing and implementing a collection plan and reviewing documents will be discussed.

Developing and Implementing a Collection Plan

Once you have accomplished your pre-collection activities and made a start at reaching stipulation agreements with opposing counsel, as discussed in the first part of this article, it is time to develop a collection scheme. By focusing on a few key items early, the collection can be as efficient as possible and you may avoid having to retrace steps later down the road. Defining the “who,” “where,” and “what” of collection can keep everyone on the same page and set a clear path, preventing inefficient expenditure of labor and electronic resources.

Who?

It is important to maintain a “living” list of document custodians from whom collection is required, not required, and/ or completed. An excellent source of initial custodian names is a litigation hold memo. Additional names of potential custodians may be discovered during employee interviews and initial document review. The list of document custodians should identify the full names, current titles, and geographic location (if there are multiple corporate locations) of each custodian.

If possible, consider conducting an interview with each key person on the list. If you are outside counsel, ask in-house counsel to join you in the interview and to explain why you are contacting the interviewee and why it is important to the company. Explain the litigation in general terms, as well as a summary of the document requests. Ask the interviewee whether they might have responsive documents, where they store such documents (whether in hardcopy and/or electronic format), who else might have responsive documents, and if there is anyone else you should talk to regarding the subject matter of the litigation. Ask if the interviewee ever takes documents home. It’s better to get them to think about such things at the start of discovery, rather than the day before their deposition preparation.

Take copious notes during each interview and save those notes at least until discovery is complete. As new information is discovered during document review, you may want to revisit (or rule out) certain custodians for repeat interviews based on that later-discovered information.

Also, as early as practical, develop a list of all current and former attorneys that worked on documents (such as prosecution dockets or agreements) you might be collecting. This will be extremely important during the earliest document review sessions when the reviewers are trying to identify privileged communications.

Finally, determine who will collect hardcopy documents and electronic documents. Will it be outside attorneys, in-house counsel, IT staff, dedicated in-house e-discovery staff, or an outside service? Try to obtain contact information for all involved personnel and arrange planning meetings between outside counsel, in-house counsel, and the collecting persons to identify what is important during collection (e.g., retained metadata, custodian data, physical location data, etc.).

Where?

It is useful to develop a standardized nomenclature for collection locations. This consistent nomenclature can be used during all collection efforts and later during review efforts. For example, if a highly responsive group of documents are identified during review, it may be necessary to revisit their source location later to determine whether additional documents are present. Collection locations can be geo-physical locations (e.g., “Archive Center”) or virtual locations (e.g., Network Server\\Project Share Drive).

It is also advisable to determine the existence and operational capabilities of any internal or external archiving system. Are old documents stored in boxes in a warehouse? Is there a paper or electronic subject matter index? Is there an archive database system that can be searched with keywords or personnel names or project names? Similarly, through custodian interviews and/or discussions with IT staff, you should determine whether there are network shares or other electronic repositories that are dedicated to particular projects or individuals. These can be a rich resource for targeted document collections.

Further, try to develop a working knowledge of how the electronic collection scheme will work. For instance, it may be useful to know whether collecting personnel will need to remove a custodian’s laptop for a period of time, or if the hard drive can be cloned through the network. This is a common question during employee interviews. It is also beneficial to know details such as whether the collecting personnel can restrict email searches to specific folders on the email server and whether they can remotely access offline mail folders, such as PST files.

What?

When collecting documents, two very important things to remember are to record the collection information (or metadata) and to maintain familial relationships (as maintained in the ordinary course of business). As to the former, it saves many headaches down the road if every group of hardcopy documents collected is adequately identified as to what date it was collected, where it was stored, who collected it, and who the custodian was. For electronic documents, care must be taken to identify the proper custodian (which may be a network share or archiving system as opposed to a person) and to preserve metadata. Even if metadata is not ultimately produced, it is still useful during document review and searching.

Additionally, care should be taken so that physical documents are collected and transported in a manner that does not disturb any folder or binder arrangements, or other collating methods. For electronic data, family data should always be preserved. Every modern document review system can display document family hierarchies and there is nothing more frustrating than reviewing an email that points to an attached critical document and finding that the document is not there due to collection issues. This can lead to significant spoliation allegations and must be avoided.

Reviewing Documents

Once collection is progressing in earnest, and review is about to begin, a few early considerations can aid in an efficient review and forestall time-consuming complaints following production.

Document Coding

If you plan to code your documents during the review process (e.g., for subject matter content or legal issues), try to plan your process well in advance. The goal is to touch a document only once (or twice in a two-tier review process) and to never have to return to it again for review. By initially identifying your codes carefully, your reviewers will not have to return to previously reviewed documents to recode with amended codes.

Additionally, you should make an informed decision about the quantity and granularity of codes used by reviewers. Highly granular coding, if done effectively, can make later work on specific legal issues much easier. However, it is rarely done effectively, and it can exponentially increase the review time for each document. Further, if codes are not well defined as discrete, and smartly limited, subject matter areas or legal issues, they can have substantial overlap. The consequence is that when you’re later searching for documents based on codes, the results of a search are not always useful without another round of review.

Review Order

Consider identifying key custodians and having each reviewer proceed logically and completely through the documents collected from a single custodian before moving onto the next. A common alternative is to search the entirety of unreviewed documents (or some subset of those documents) for key documents or document groups, and then review those. However, this can interrupt familial relationships and interfere with a contextual understanding of the documents that are being reviewed. Sometimes it can’t be helped and you have to focus on certain categories of documents, but in general, a custodian-by-custodian review may be best.

Production Order

Always try to produce logical sets of documents. Whether or not you perform a custodian-by-custodian review, try to produce the complete set of each custodian’s documents in a single batch. The produced documents should be Bates-ordered based on the custodian and document-family relationships. This is the most logical manner and satisfies the “as kept in the ordinary course” requirement.

It is also important to resolve all responsiveness or privilege questions prior to producing a logical set of documents. It is not uncommon that certain reviewed documents will be segregated and held back because they are questionable. However, if their family members are produced, and those segregated documents are later determined to be responsive and non-privileged, they will be produced out of order. This is a situation that is best avoided as it causes confusion, potentially violates the “ordinary course” rule, and can cast a spot light on those documents.

Conclusion

As a final note, always proceed with an eye toward developing a defensible history of good faith preservation, collection, and review efforts when collecting and reviewing documents. Maintain a written record (including summary logs) of all collection efforts, intra-party communications, interview notes, collection notes, and documents received outside of the ordinary collection methods. Good documentation throughout the collection and review process can help answer later questions of whether certain documents exist, what efforts you made to find them, and why opposing counsel doesn’t have a reasonable argument when he or she alleges that documents are missing.

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