So Maybe You Should Think About This Ahead Of Time
Good planning makes for less litigation
By Tim Cedrone
Hagenbuch v. 3B6 Technologies, LLC, 2006 U.S. Dist. LEXIS 10838 (N.D. Ill. 2006)
Employee/Employer Implicated: Management
eLesson Learned: Reach an agreement with the other party on how documents will be produced.
What happens when a company accused of patent infringement agrees to certain electronic discovery procedures and then fails to follow those procedures? The answer is very simple: the court turns into the Incredible Hulk! Court get angry! Court smash! Court bash!
In Hagenbuch v. 3B6 Technologies, LLC, the plaintiff accused the defendant of patent infringement related to devices for onboard weighing systems for vehicles. During the course of pretrial discovery, the plaintiff requested certain documents from the defendant. These documents included electronic media, DVDs, and other electronic discs.
3B6 Technologies continuously rejected the plaintiff’s requests. Eventually, 3B6 caved in, and it agreed to allow the plaintiff to come to its Illinois office to inspect the documents. At first, 3B6 agreed to copy any documents and electronic media the plaintiff designated after the inspection. When it came time to make the copies, 3B6 decided to convert all the documents into TIFF documents and then delivered the TIFF files to the plaintiff. The plaintiff did not find this acceptable, and asked the court to force 3B6 to produce identical copies of the original. The plaintiff argued that the TIFF documents were inadequate reproductions because they lacked clarity, metadata, searchability, and other information.
To deal with this situation, the plaintiff brought a motion before the court seeking to compel the defendant to provide the requested documents in the requested format. In no uncertain terms, the court agreed with the plaintiff. The court didn’t seem to happy with the fact that the defendant refused to cooperate with the plaintiff after the plaintiff abided by the defendant’s request to come to Illinois to inspect the documents. So what did the court do? It went all Incredible Hulk-style on the defendants! Court smash! Court bash! Court get angry with defendant! That’s right – the court got right down to it and set the defendant straight: it had to comply with the plaintiff’s request, considering that the plaintiff had already complied with the defendant’s requests.
The lesson to be learned here is one that both parties would have been wise to follow: reach an agreement before discovery begins specifying the format in which electronic documents will be produced. If both parties had reached such an agreement in this case, then they probably would not have had to go to court to resolve their production problems. Granted, its possible (maybe probable) that 3B6 Technologies wouldn’t have followed an agreement like this, especially considering their general reticence during the discovery process. But it’d be worth a try, wouldn’t it be?
Tim Cedrone is a third year student at Seton Hall Law School.
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March 11th, 2009 at 6:37 am
Cases like this make me wonder whether it is ever appropriate to produce files in .TIFF format.
For all you patent litigants out there, it is not a good idea to upset judges during discovery, especially when a Markman claim-construction hearing has not been had. Since it is the judge’s power to construe the words of a patent claim, a pissed-off judge may not be as amenable to your construction of the claims as a non-pissed-off one. And while a judge’s decision on claim construction is appealable, that appeal costs time and money that you may not have needed to spend.
March 17th, 2009 at 8:55 pm
It seems pretty obvious that 3B6 was trying to buy time. It’s hard to believe that a techonology firm would unknowingly produce documents in a difficult, unworkable format. I think 3B6’s conduct could have qualified as a case of bad faith.