Before complying with a discovery request, parties should seek to obtain a protective order to prevent the inadvertent dispersal of sensitive information.
By Matthew T. Utermark
Employee/Employer Implicated: Counsel
eLesson Learned: Complying with discovery requests, particularly those for electronic documents, can be an overwhelming ordeal. To protect from inadvertent disclosures of documents when complying with discovery requests, the parties involved should seek protection orders to prevent the disclosure of sensitive information. While protective orders are normally aimed at preventing sensitive information from being released, this case illustrates the importance of protective orders and how they can shield a company from the inadvertent release of confidential or privileged information, depending on the scope of the protective order.
In Alcon Manufacturing, Ltd. V. Apotex, Inc., the discovery dispute arose from a lawsuit filed by the defendants against the plaintiffs for patent infringement. The defendants served discovery requests on the plaintiffs, with which they obliged. However, in the plaintiff’s response to these discovery requests, they inadvertently produced a document that contained privileged information, including attorney handwritten notes.
The plaintiffs did not discover the unintentional production of the document until the deposition phase. The defense counsel first called a woman to identify the document containing the privileged information, but she did not recognize the document or the handwriting. The plaintiffs’ counsel did not object to the introduction of this document, nor did they indicate that it had been inadvertently produced.
The defense counsel then called the plaintiff’s in-house counsel and introduced the document. The in-house counsel identified the handwriting of the notes and signature, at which point the plaintiffs’ counsel indicated that the writing may be privileged and moved to strike the notation.
The plaintiffs determined that the document was privileged, but had been inadvertently produced due to an electronic document break error. The plaintiffs provided a redacted version of the document without handwritten notes and asked the defendants to destroy all copies of the document with notations pursuant to the protective order, which required “the return of inadvertently produced attorney-client communications.” The defendants failed to return or destroy the copies, but rather provided copies to its expert witnesses, one of whom relied upon it in his report.
The plaintiffs filed suit, and the defendants raised several argument, one of which was that the protective order was inapplicable based on the plaintiff’s assertion of attorney-client privilege. The defendants argued that the protective order only required the return of inadvertently produced attorney-client communications, but not for the removal of deposition exhibits from the record. The defendants argued that the privileged document was part of the deposition record and potentially the trial record, so the only recourse for the plaintiffs must be a motion in limine, not enforcement of the protective order.
United States Magistrate Judge Tim. A Baker disagreed with this argument. Judge Baker wrote that the protective order governed the “pretrial disclosure and/or production of information, documents and tangible things in connection” with the suit. However, making the document an exhibit for the deposition did not make the document part of the trial record. Judge Baker pointed out that the defendants even acknowledged that the exhibit was only potentially part of the trial record. Thus, Judge Baker concluded that the protective order governed the inadvertent disclosure of this document.
Insisting on a protective order allows a party to prevent mistakes such as inadvertent production made during the discovery process, which is especially important in e-discovery when it is easier to make mistakes regarding the inadvertent release of information. Additionally, it can protect a party from a malpractice claim by the party that you are representing. As I will explore in my next post, without a protective order, it is possible to waive all potential claims of privilege relating to produced documents if a party allows an exhibit to be used and marked as an exhibit.
Matthew is a graduate of Seton Hall University and is currently a third year student at Seton Hall Law.
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February 6th, 2009 at 7:11 pm
It seems Judge Baker took a more practical approach to the issue of the inadvertently produced documents. Our conscience wants the Judge to rule the way he did in this case. Any trial lawyer could have made the same mistake and I am glad Judge Baker didn’t get bogged down by the technicalities of Defendant’s silly arguments.