Qualcomm v. Broadcom: the missing JVT emails, run with Claira

Qualcomm sued Broadcom in the Southern District of California on October 14, 2005, alleging that Broadcom products built to the H.264 video compression standard infringed two of its patents. Broadcom's defence turned on the Joint Video Team, the standards body that developed H.264. It argued that Qualcomm had taken part in that work in 2002 and early 2003 without disclosing its patents, and so had waived the right to enforce them. Requests served on January 23, 2006 and July 14, 2006 asked for the documents on Qualcomm's participation in the JVT.

Qualcomm's case at trial was that it had not taken part in the JVT in 2002. The court later found that emails in its own archives undercut that argument.

Take the chair of Qualcomm's litigation team as the second set of requests arrives, with the collection loaded into Nuix Discover. The job is to test the client's account against the client's own records before anyone signs the response.

The team first needs a map of the collection set against the people who matter. Claira's early case assessment reads the metadata of the whole case without reading the documents, and runs from the Claira menu under More with Run assessment. Its People section lists the custodians, the senders and recipients and the pairs who write to each other most, and its date coverage section draws a timeline for each custodian with spikes and gaps marked.

Two readings matter here. A name that turns up often as a sender or recipient without a mailbox of its own suggests the collection needs widening. A video-coding engineer whose mail goes quiet before September 2003 suggests a gap in what was collected.

In 2010 the court traced the missed documents partly to poor communication between Qualcomm's engineers, in-house counsel and outside lawyers, and to outside counsel's limited grasp of the client's information systems. A dated custodian map is a concrete place to start that conversation.

Next the team writes down what the case is about. A Case Context started from the Litigation/eDiscovery template sets out the parties, the patents, the waiver defence and the relevance rules. Claira can draft it from up to five key documents, such as the complaint and Broadcom's two sets of requests, with numbered citations to the source of each fact. A partner then approves it, which locks it and makes it available to the prompt generator.

From the context, the Generate search terms button asks the Agent for a search term family in dtSearch syntax, here covering the JVT, H.264, AVC and the avc_ce mailing list. The team reviews the card, asks for changes in plain words, clicks Download spreadsheet, imports the file into Nuix Discover with Add terms from file and tests the terms on a sample.

The terms need not be clever. After trial, the court found that Qualcomm located the withheld documents easily once it searched with basic JVT and avc terms.

The review prompt follows Claira's Fact Confirmation workflow, which puts a precise question to the document and writes N/A where the fact is absent. Here it asks whether the document shows Qualcomm taking part in the JVT or the avc_ce mailing list before September 2003, and if so asks for the passage. Run as Multi-Code, the same scan also fills a field for relevance to Broadcom's requests and one for the Qualcomm people named.

The team tries the prompt on ten to 25 documents with single review, choosing known answers, borderline mail and near-empty files, and revises until the output is consistent. A bulk scan then runs it across the search hits and the video-coding custodians' mailboxes, writing results into Discover fields as it goes.

Filtering out the N/A answers leaves the documents that bear on the waiver question, with the quoted passages beside them for the reviewers.

The first pass is a starting point. The team reads a sample of the N/A documents to see what the prompt missed, then runs Claira's QC Review workflow over documents the reviewers have already coded, so that disagreements come to the top. The causes worth looking for are things the prompt did not know, such as a project code name, an engineer's personal address or a thread that began on a mailing list.

Standards work often copies in-house counsel, so privilege needs its own pass. The team writes a custom prompt setting out the attorney-client privilege and work-product tests as a United States court applies them, with the names of Qualcomm's lawyers from the Case Context, and asks for the call, the type and a short reason. A lawyer confirms the calls.

Revised prompts are saved in Prompt History, a bulk scan is linked to the prompt version it ran, and the scan's PDF report records the prompts, results and comments.

The confirmed documents feed an Insight built on the Chronology template, with the bulk task as its source and Timeline as the format. Claira reads the field values as they stand, so reviewers' corrections are included, and the Insight cites the source documents inline. The timeline view groups events by year, filters by person and charts how many events fall in each month.

This is the page the waiver question would be argued from. The court later described the kind of material it would hold: an August 6, 2002 email welcoming an engineer to the avc_ce mailing list, and email from November 2002 discussing issues with the H.264 standard.

Changes are requested in the Insight's revision panel, with the original kept for comparison, and its Log Field tags the source documents in Discover so reviewers can pull them up as a set.

Claira can show the team what the collection says about 2002, and the decisions that follow belong to the lawyers. The first is whether the client's account of its JVT history can still be put forward. The second is the response itself. Under Rule 26(g), as the court set out, an attorney's signature on a discovery response certifies that it was formed after a reasonable inquiry, and judging when that inquiry is complete falls to the person who signs.

The third is the conversation the documents call for. A chronology tells the team which engineers to sit down with and which emails to put in front of them. In 2010 the court found that early in-person meetings with engineers had not taken place, and it described an incredible lack of candor on the part of the principal Qualcomm employees with relevant information. Interviews, and the follow-up collection they lead to, stay with the team.

The Insight exports to Word for the memo to the partner and the client, or to Excel with Document IDs ready for Nuix searches. The early case assessment downloads as a dated PDF, and the bulk scan report records the prompts behind the review. Together they document the inquiry a signature rests on.

In the real case, on January 14, 2007, a search of an engineer's laptop for avc_ce found 21 emails that had not been produced, and they reached Broadcom on January 24, during trial. The jury found for Broadcom on January 26. By June 29, 2007, Qualcomm had searched the email archives of 21 employees and found more than 46,000 requested documents, over 300,000 pages, that had not been produced.

On January 7, 2008, the court ordered Qualcomm to pay Broadcom $8,568,633.24. The Federal Circuit affirmed the waiver on December 1, 2008, limiting it to H.264-compliant products. The companies settled all their litigation on April 26, 2009, and on April 2, 2010 the court declined to sanction any of the six outside lawyers, finding no bad faith.