Lack of Motion to Compel Preempts Patent Attorney Sanctions

Thanks to Bob Ambrogi for writing in IMS Expert Services "Bullseye" about the what led to the $8.6 million in discovery sanctions in Qualcomm Incorporated v. Broadcom Corporation, Case No. 05cv1958-B (S.D. Cal. 1/7/08)( . . . the Court declines to impose monetary sanctions against the Sanctioned Attorneys for several reasons. First, if the imposed sanctions do not convince the attorneys to behave in a more ethical and professional manner in the future, monetary sanctions are unlikely to do so. Second, it is possible that Qualcomm will seek contribution from its retained attorneys after it pays Broadcom’s attorneys’ fees and costs and, in light of that significant monetary sanction, an additional fine is unlikely to affect counsel’s future behavior. Third, the Court acknowledges the limitations on its authority (see sections A and B and footnotes 5 and 9) and, based on those concerns, declines to impose significant monetary sanctions.):

Qualcomm insisted it had not participated in the [Joint Video Team standards-setting body that created the H.264 standard] prior to adoption of the H.264 standard. As the case progressed, Qualcomm "became increasingly aggressive" in denying its JVT participation, Magistrate-Judge Major found.

. . . Magistrate-Judge Major's ruling found that Qualcomm's lawyers failed to search key employees' computers for e-mails or documents relevant to Broadcom's discovery requests. But as the case neared trial, a Qualcomm lawyer discovered
21 e-mails on the laptop of one employee, Viji Raveendran, showing her participation in a JVT-related e-mail list that discussed the development of the H.264 standard. Qualcomm's lawyers decided not to produce these e-mails to Broadcom.

. . . Qualcomm notified Judge Brewster that it found thousands of relevant documents that it had failed to produce and that the documents "revealed facts that appear to be inconsistent with certain arguments" that it made at trial.Within a short time, it had located more than 46,000 documents consisting of more than 300,000 pages that it had failed to produce, and it continued to find additional documents for several months more.

. . . Ironically, in considering what sanctions to impose, the magistrate-judge noted that Qualcomm's deception worked to its benefit. Because Broadcom accepted Qualcomm's representations that its discovery responses were complete, it never filed a motion to compel. Without such a motion, the federal rules allow the court to sanction only the party, not its attorneys. "Thus, Qualcomm's suppression of documents placed its retained attorneys in a better legal position than they would have been in if Qualcomm had refused to produce the documents and Broadcom had filed a motion to compel," she wrote.