IP Discovery Checklist: Litigation Hold Scope, ESI Protocol Negotiation, Source Code Review Conditions, Privilege and Clawback Terms, and Production and Sanctions Risk

By Casey Scott McKay · 2025-10-11

A ten-phase working checklist for discovery in an intellectual property dispute, usable by either side. Phases one to three cover the preservation trigger, the hold notice, and the system map that must exist before negotiation begins. Phases four to six cover custodian selection, search design and testing, and the ESI protocol term by term. Phase seven covers the protective order tiers, the source code review conditions, and the prosecution bar. Phases eight to ten cover privilege and clawback, production mechanics and third-party discovery, and cross-border collection. A closing phase assesses sanctions exposure and the budget. Each phase ends with a gate.

IP and Technology > Patent Litigation | Checklist | Published 11 October 2025 - Updated 13 November 2025 | Casey Scott McKay - marksy.us

How to use this checklist

Discovery in an intellectual property case fails in sequence. A hold issued late destroys evidence that no later step recovers. A protocol negotiated before the systems are mapped commits a party to something it cannot perform. Search terms agreed without hit counts become a cost the party accepted blind. A protective order signed without prosecution counsel's input gives away a strategy that was not the litigator's to give.

This checklist runs in ten phases plus a closing assessment, in the order the work has to happen. Each phase ends with a gate — the conditions that must hold before the next phase starts.

Use it alongside Managing Discovery in an IP Dispute for the substance behind each item, and The Case Is in the Files for the background. Clause language sits in the IP Discovery and Source Code Review Toolkit.

Phase 1 — Fix the preservation trigger

[ ] Identify every candidate trigger event and its date: demand letter, notice letter, indemnity demand from a customer, instruction to obtain a freedom-to-operate opinion, departing employee concern, internal escalation about a competitor's patent, board discussion of enforcement.
[ ] For a prospective plaintiff, treat the decision to investigate assertion as the trigger, and preserve the pre-suit investigation file accordingly.
[ ] Search the client's own records for internal statements about anticipated litigation, since those statements will define the date whatever counsel later argues.
[ ] Choose the earliest defensible date rather than the most convenient one.
[ ] Record the analysis in a short contemporaneous memorandum: date, reasoning, and steps taken.
[ ] Identify any subsidiary, affiliate, or joint venture whose material is within the party's possession, custody, or control under Fed. R. Civ. P. 34.
[ ] Identify any material held by a vendor, contractor, or cloud provider on the party's behalf.
[ ] Confirm whether an earlier related matter already imposed a hold covering some of this material.

Gate 1. A trigger date is fixed, documented, and defensible on the client's own internal record, and the universe of entities and third-party holders within control has been identified.

Phase 2 — Issue and maintain the hold

Drafting

[ ] Name the custodians individually rather than by department.
[ ] Describe the systems specifically — mailbox, named chat channels and direct messages, named ticketing projects, named wiki spaces, named shared drive paths, named repositories.
[ ] State a date range where one is defensible.
[ ] State the prohibited actions expressly: no deletion, no editing of existing documents, no removal of material from devices, no disappearing-message settings, no clean-up of old files.
[ ] Keep it short enough to be read.
[ ] Require acknowledgement and set a deadline.

Systems suspension

[ ] Send a parallel notice to IT and to each system owner instructing suspension of auto-deletion.
[ ] Confirm suspension in writing, system by system, with dates.
[ ] Suspend the departing-employee deprovisioning and wipe schedule for any relevant former employee.
[ ] Suspend backup rotation where backups are the only source for a relevant period.
[ ] Disable ephemeral messaging for the affected teams, and record that it was disabled.
[ ] Confirm the mobile device management policy will not wipe a relevant device.

Custodian interviews

[ ] Interview each first-tier custodian for fifteen to thirty minutes.
[ ] Ask what systems they use, including anything not on the IT list.
[ ] Ask about personal devices, personal accounts, and shadow tools.
[ ] Ask who else worked on the relevant matter, and add custodians accordingly.
[ ] Ask about former colleagues who held relevant material.
[ ] Ask about legacy systems and shared drives predating current infrastructure.
[ ] Record the interviews in a memorandum.

Maintenance

[ ] Diary a quarterly hold review.
[ ] Reissue on any change of scope, and to any new custodian on joining the matter.
[ ] Track departures and secure the departing custodian's material before deprovisioning.
[ ] Track system migrations and preserve pre-migration state where history would be lost.
[ ] Record every step, because the record is the defence.

Gate 2. The hold is issued to named custodians with system-specific instructions, acknowledgements are obtained or chased, auto-deletion is suspended and confirmed in writing across every relevant system, and custodian interviews have surfaced the systems the IT inventory missed.

Phase 3 — Map the systems

[ ] Build a data map with one row per system: name, contents, administrator, retention setting, collection method, export format, volume, and date coverage.
[ ] Cover email, including archives and journaling.
[ ] Cover every chat platform, and decide the unit of production — message, conversation, or day — before collecting.
[ ] Cover ticketing and issue tracking, including comment history and attachments.
[ ] Cover wikis and document collaboration platforms, including version history.
[ ] Cover code hosting and version control, including commit history, pull request discussion, and branch history.
[ ] Cover design and prototyping tools, which frequently hold the earliest version of the accused feature.
[ ] Cover video conferencing recordings and auto-generated transcripts.
[ ] Cover shared drives and file servers, including legacy paths.
[ ] Cover structured data systems separately: sales ledger, CRM, ERP, telemetry, and billing.
[ ] Specify fields and queries for each structured source, drafted by the damages team rather than the vendor.
[ ] Cover former-employee archives and their deletion schedules.
[ ] Cover personal devices and personal accounts, and take a position on control.
[ ] Cover anything held outside the jurisdiction, and flag it for phase ten.
[ ] Identify sources that are not reasonably accessible under Fed. R. Civ. P. 26(b)(2)(B) and document why.
[ ] Estimate volume and cost per system before any negotiation.

Gate 3. A complete data map exists, structured data specifications are drafted, offshore sources are flagged, and the party knows its own volumes and costs before it negotiates anything.

Phase 4 — Select custodians and date ranges

[ ] Build the custodian list from the substantive theory, not the org chart.
[ ] For infringement: the design engineers, the product manager, the architect, and the technical lead for the accused functionality.
[ ] For willfulness: whoever received or circulated the patent, whoever commissioned or received any opinion, and whoever made the decision to proceed.
[ ] For invalidity and prior art: the inventors, the early development team, and whoever holds the pre-priority-date records.
[ ] For damages: sales leadership, pricing, finance, and the licensing function.
[ ] For trade secret matters: the departing employee, their manager, IT security, and the receiving team at the new employer.
[ ] Tier the list — collect and review tier one, collect and hold tier two, reserve tier three.
[ ] Propose an addition mechanism tied to produced documents with a numeric cap.
[ ] Set date ranges per issue rather than one global range.
[ ] Map each range to the substantive period it serves and be able to justify it.
[ ] Quantify the volume and cost of the proposed list before agreeing it.
[ ] Quantify the volume and cost of the opposing proposal, for the proportionality record.

Gate 4. A tiered custodian list with issue-specific date ranges is costed, an addition mechanism is drafted, and the cost of the other side's proposal is quantified with vendor support.

Phase 5 — Design and test the search

[ ] Draft candidate search terms with engineer input, not from the pleadings alone.
[ ] Capture internal code names, project names, abbreviations, and misspellings.
[ ] Capture the patent numbers, the inventor names, and the plaintiff's corporate names and predecessors.
[ ] Run a hit report for every candidate term: total hits, unique hits, and family count.
[ ] Drop terms whose hit counts are unmanageable and document why.
[ ] Test proximity and phrase alternatives for over-broad single terms.
[ ] Provide for at least two rounds of iteration in the protocol.
[ ] Decide whether technology assisted review will be used, and on what population.
[ ] If using TAR, define the training approach, the validation methodology, and the recall target.
[ ] Decide the degree of transparency and record the agreement.
[ ] Sample the null set and record richness, which is the defensibility argument.
[ ] Write a contemporaneous methodology memorandum.
[ ] Preserve the hit reports and sampling results, since they are the evidence if adequacy is challenged.

Gate 5. Terms are tested with hit reports, the methodology is documented contemporaneously, the null set has been sampled, and nothing has been agreed on an untested basis.

Phase 6 — Negotiate the ESI protocol

Definitions and scope

[ ] Define electronically stored information by reference to the actual systems in the data map.
[ ] Define "document" to include chat messages, ticket records, and structured data exports.
[ ] Define the accused instrumentalities where the case is a patent case, since the definition drives collection.
[ ] Enumerate the sources that will be collected and, expressly, those that will not.
[ ] Address backup, disaster recovery, and legacy systems as not reasonably accessible, with a good-cause mechanism.

Custodians, ranges, and search

[ ] Insert the tiered custodian list and the addition mechanism from phase four.
[ ] Insert the issue-specific date ranges.
[ ] Insert the search methodology, iteration rounds, and validation approach from phase five.

Form of production

[ ] Native format for spreadsheets, presentations with speaker notes, and anything with tracked changes or embedded objects.
[ ] Searchable images with extracted text for the remainder, with a specified load file format.
[ ] Chat produced with conversational context and threading preserved, and specify the window.
[ ] Structured data produced as delimited exports with a data dictionary.
[ ] Source code excluded from ordinary production and addressed in the protective order.
[ ] Specify treatment of colour, hidden rows, comments, and embedded audio or video.

Metadata

[ ] List the required fields expressly: begin and end bates, attachment range, custodian, other custodians, source system, file path, file name, extension, author, from, to, cc, bcc, date sent, date received, date created, date last modified, subject or title, hash value, page count, confidentiality designation, and redaction flag.
[ ] Require parent-child relationships to be preserved and produced.
[ ] Require the "other custodians" field if global de-duplication is used.

Process terms

[ ] Choose global or custodial de-duplication deliberately, weighing cost against knowledge evidence.
[ ] Address email thread suppression and whether unique attachments are retained.
[ ] Set rolling production dates and a substantial completion date.
[ ] Set the privilege log format, categories, and the post-complaint carve-out.
[ ] Allocate cost for restoration, foreign collection, and specialised extraction.
[ ] Provide a meet-and-confer requirement and, in complex matters, a special master or discovery referee.
[ ] Provide for amendment of the protocol on agreement or for good cause.

Gate 6. The protocol is drafted as an order the party can perform, every source is either in scope or expressly out, the production form preserves what the case needs, and the privilege log format is settled before any logging begins.

Phase 7 — Protective order and source code conditions

Tier design

[ ] Define Confidential, Highly Confidential — Attorneys' Eyes Only, and Highly Confidential — Source Code.
[ ] Name the categories of person with access at each tier.
[ ] Name one or two in-house lawyers for AEO access who are not engaged in competitive decision-making, applying U.S. Steel Corp. v. United States.
[ ] Provide for expert disclosure with a CV and engagement list, and a defined objection window with stated grounds.
[ ] Provide a designation challenge mechanism placing the burden on the designating party.
[ ] Provide consequences for systematic over-designation.
[ ] Address treatment of deposition transcripts and hearing transcripts.
[ ] Address filing under seal and the local rule requirements.
[ ] Address return or destruction at the end of the case with certification.

Source code access

[ ] Specify a standalone, non-networked computer with external ports disabled.
[ ] Specify who supplies and maintains it.
[ ] Specify the location, and negotiate for one convenient to the reviewing expert.
[ ] Specify notice required for a review session and the available hours.
[ ] Tie the code to be made available to the accused functionality, with a mechanism to expand on a showing.
[ ] Require build environments and version control history where the analysis needs them.
[ ] Agree the list of analysis tools the producing party will install.
[ ] Permit paper notes, designated at the source code tier.
[ ] Prohibit cameras, recording devices, and personal computing equipment in the room.
[ ] Address whether a note-taking device with networking disabled is permitted.

Printing and handling

[ ] Set a page cap as a total and per request, with a good-cause increase mechanism.
[ ] Require the producing party to print and bates-stamp, within a defined period.
[ ] Specify secure storage, the number of copies permitted, and a copy log.
[ ] Address use of excerpts in expert reports, in depositions, and at trial, including the pretrial handling of exhibits.
[ ] Address service of expert reports containing code excerpts.
[ ] Require a log of review sessions and attendees.

Prosecution bar

[ ] Define the subject matter scope by reference to the accused technology, not the whole portfolio.
[ ] Define the barred activities: drafting claims, amending claims, and advising on claim scope.
[ ] Decide expressly whether the bar reaches post-grant proceedings and claim amendment in an inter partes review.
[ ] Set the duration, typically one to two years from final disposition.
[ ] Make the bar individual rather than firm-wide, with a screening provision.
[ ] Apply the In re Deutsche Bank Trust Co. Americas analysis to any exemption request.
[ ] Involve the client's prosecution counsel in the negotiation before agreeing anything.
[ ] Check the bar against any pending continuation or reissue strategy.

Gate 7. The protective order is entered with workable tiers, named in-house access, a source code regime the reviewing expert can actually use, and a prosecution bar negotiated with prosecution counsel's input.

Phase 8 — Privilege, clawback, and the log

Orders and agreements

[ ] Move for a Fed. R. Evid. 502(d) order at the scheduling conference.
[ ] Confirm the order states non-waiver in this and any other federal or state proceeding.
[ ] Draft the clawback agreement separately: notice, sequestration, return or destruction, no use pending resolution, and challenge with the document lodged under seal.
[ ] Include an express provision that production does not itself establish anything about privilege.
[ ] Address inadvertent production of source code or highly confidential material in the same terms.

Log design

[ ] Agree categorical logging for defined categories, with the categories named.
[ ] Agree metadata-based logging for the remainder, with the fields listed.
[ ] Agree an express carve-out for post-complaint communications with litigation counsel.
[ ] Agree the treatment of redacted documents on the log.
[ ] Agree the timing of log exchange relative to production.

IP-specific privilege issues

[ ] Identify patent agent communications and apply In re Queen's University at Kingston.
[ ] Identify foreign patent attorney communications and agree a treatment, since the law is inconsistent.
[ ] Confirm any common interest arrangement is documented in writing and predates the communications it covers.
[ ] Identify prosecution counsel communications and the risk of inequitable conduct discovery under Therasense, Inc. v. Becton, Dickinson & Co. and 37 C.F.R. § 1.56.
[ ] Apply Upjohn Co. v. United States to communications with non-executive employees.
[ ] Apply work product analysis from Hickman v. Taylor and Fed. R. Civ. P. 26(b)(3) to investigation materials.

Opinion reliance

[ ] Identify whether an opinion of counsel exists and whether reliance is contemplated.
[ ] Model the waiver scope in the relevant district before electing.
[ ] Diary the election deadline set by the scheduling order or local rules.
[ ] Assess the willfulness position under Halo Electronics, Inc. v. Pulse Electronics, Inc. with and without reliance.
[ ] Segregate opinion-related material so an election can be executed without a fresh review.

Waiver hygiene

[ ] Audit for legal advice forwarded to business audiences with no need to know.
[ ] Audit for legal advice embedded in engineering or product documents that will be produced.
[ ] Audit for advice summarised in board or investor materials.
[ ] Audit for counsel copied into large chat channels.
[ ] Brief the client on communication hygiene going forward, per the IP Privilege Protection Checklist.

Gate 8. A 502(d) order is entered, the clawback procedure is agreed, the log format is settled with a post-complaint carve-out, the IP-specific privilege categories are identified, and the opinion reliance decision is modelled rather than deferred.

Phase 9 — Production, quality control, and third parties

Production mechanics

[ ] Produce on a rolling basis against the protocol's dates.
[ ] Maintain a production log: volume, date, bates range, custodians, sources, and any deficiencies.
[ ] Quality-control each volume before service: corrupted files, missing families, unprocessed containers, and load file integrity.
[ ] Run a privilege screen on each volume and record the result.
[ ] Redact narrowly, log every redaction and its basis, and avoid redacting non-responsive material within responsive documents unless expressly permitted.
[ ] Apply confidentiality designations document by document, not volume by volume.
[ ] Verify metadata completeness against the protocol's field list.
[ ] Confirm chat productions preserve threading and are usable.
[ ] Confirm structured data exports match the agreed specification and include the data dictionary.

Deficiency handling

[ ] Respond to deficiency letters substantively and promptly.
[ ] Where a request exceeds scope, object specifically under Fed. R. Civ. P. 34 and state whether material is withheld.
[ ] Where a proportionality objection is made, support it with volumes, hit counts, review-hour estimates, and rates, per Fed. R. Civ. P. 26(b)(1).
[ ] Circulate a same-day note after every meet-and-confer recording what was agreed.
[ ] Escalate unresolved disputes early enough for the schedule to absorb the resolution.

Third-party discovery

[ ] Identify targets: suppliers, component manufacturers, contract manufacturers, customers, distributors, prior employers of inventors, prior art custodians, and litigation funders.
[ ] Serve under Fed. R. Civ. P. 45 with the notice the rule requires.
[ ] Scope each subpoena to the third party's actual holdings and take reasonable steps to avoid undue burden.
[ ] For assertion cases, address funder and real-party discovery per the Assertion and Funding Checklist.
[ ] Consider whether any target is best reached through a foreign mechanism instead.

Forensics

[ ] Use a qualified examiner for any device imaging.
[ ] Document acquisition, hash all images, and preserve originals untouched.
[ ] Maintain a chain of custody record.
[ ] Where the claim is trade secret misappropriation under 18 U.S.C. § 1836, align the forensic scope with the identification, per the Trade Secret Litigation Checklist.

Depositions

[ ] Notice a Fed. R. Civ. P. 30(b)(6) topic on preservation: hold issuance, scope, systems, and auto-delete suspension.
[ ] Prepare designees on the noticed topics rather than on personal knowledge.
[ ] Sequence technical depositions after source code review.
[ ] Designate confidential testimony on the record at the correct tier.

Gate 9. Productions are logged, quality-controlled, and correctly designated; deficiency correspondence is substantive; third-party discovery is served and scoped; forensic chain of custody is intact; and the preservation designee is prepared.

Phase 10 — Cross-border collection

[ ] Identify every custodian, system, and dataset located outside the United States.
[ ] Identify the applicable data protection regime for each location.
[ ] Establish a lawful basis for processing and a transfer mechanism before any data leaves the jurisdiction.
[ ] Filter in-region by date, custodian, and search term, and transfer only what survives the filter.
[ ] Pseudonymise personal data irrelevant to the matter, and record the methodology.
[ ] Negotiate a protective order provision recognising the pseudonymisation so it is not read as concealment.
[ ] Check for a blocking statute in the relevant jurisdiction and take local advice.
[ ] Where a blocking statute applies, raise it early and propose a mechanism, applying Société Nationale Industrielle Aérospatiale v. United States District Court.
[ ] Assess whether the Hague Evidence Convention offers a route for material genuinely unobtainable from a party, and budget months rather than weeks.
[ ] For data in mainland China, assess export restrictions and state secrets exposure before committing to produce.
[ ] Where a foreign proceeding needs US-based evidence, assess 28 U.S.C. § 1782 and the limits set in ZF Automotive US, Inc. v. Luxshare, Ltd..
[ ] Sequence the analysis before the ESI protocol is signed, per the Cross-Border IP Litigation Checklist.

Gate 10. Every offshore source has a lawful basis and a transfer mechanism, minimisation has been applied at source, blocking statutes and export restrictions are identified, and nothing has been promised in the protocol that the collection cannot lawfully deliver.

Closing assessment — sanctions exposure and budget

Sanctions

[ ] Assess whether any ESI has been lost that should have been preserved, and whether it can be restored or replaced.
[ ] Assess prejudice, which governs the availability of curative measures under Fed. R. Civ. P. 37(e)(1).
[ ] Assess whether the record could support a finding of intent to deprive under Fed. R. Civ. P. 37(e)(2), including auto-delete left running, ephemeral messaging, device wiping, and post-trigger deletion.
[ ] Assess exposure under Fed. R. Civ. P. 37(b) and (c) for order violations and disclosure failures.
[ ] Assess non-ESI spoliation exposure for prototypes, samples, and devices under inherent authority.
[ ] Assess protective order breach exposure, particularly on source code handling.
[ ] Benchmark the party's process against Zubulake v. UBS Warburg LLC.
[ ] Decide whether to disclose a loss proactively, which is almost always better than having it found.

Budget

[ ] Cost collection per system.
[ ] Cost processing per gigabyte.
[ ] Cost review in hours at the applicable rate, which will be the largest line.
[ ] Cost privilege logging separately.
[ ] Cost source code review in expert days, including travel and the constraints of the review room.
[ ] Cost foreign collection separately, including local counsel.
[ ] Cost third-party subpoena work, including anticipated motion practice.
[ ] Compare the total against the damages exposure, and use the comparison in the proportionality record.
[ ] Reassess after each phase rather than once at the outset.

Strategy checks

[ ] Confirm the client's own harmful documents have been searched for and assessed, in month two rather than month fourteen.
[ ] Confirm the damages contention has been pinned early where the party is a defendant, since it anchors proportionality.
[ ] Confirm any stay application is coordinated with the discovery schedule, per Defending a Patent Assertion.
[ ] Confirm the discovery plan maps to the elements to be proved rather than to volume.
[ ] Confirm expert scheduling accounts for the real pace of source code review.

Closing gate. Sanctions exposure is assessed honestly, the budget is built bottom-up and reassessed per phase, and the discovery plan is tied to the elements the case will turn on.

Case-type variations

The ten phases hold across IP disputes, but the emphasis shifts by case type, and applying a patent template to a trade secret matter wastes most of the effort.

Patent infringement, competitor versus competitor

[ ] Expect symmetric burden and negotiate reciprocal terms, since both sides have products, engineers, and code.
[ ] Prioritise the source code regime, because both sides will use it and an unworkable regime hurts both.
[ ] Prioritise the prosecution bar, because both parties have live prosecution.
[ ] Expect the willfulness documents to matter on both sides, and search the client's own files for them first.
[ ] Coordinate with any parallel post-grant proceeding, including the estoppel consequences.

Patent assertion by a non-practising entity

[ ] Expect extreme asymmetry and build the proportionality record from day one.
[ ] Pin the damages contention early, since it anchors every proportionality argument.
[ ] Prioritise funder, real-party, and standing discovery.
[ ] Expect the plaintiff's production to be small and its requests to be large, and quantify both.
[ ] Sequence a stay application against the discovery schedule.
[ ] Assess fee exposure under 35 U.S.C. § 285 on both sides.

Trade secret misappropriation

[ ] Front-load forensics, because the device evidence degrades and the timeline is the case.
[ ] Resolve identification with particularity before broad discovery, since courts increasingly require it.
[ ] Expect the protective order to carry the identification, and design tiers accordingly.
[ ] Expect third-party discovery against the new employer to be central.
[ ] Expect the plaintiff's own security measures to be discoverable, since reasonable measures is an element.

Software copyright

[ ] Expect the code comparison to dominate, and budget expert time accordingly.
[ ] Expect access evidence to be as important as similarity evidence.
[ ] Expect development history and version control to carry the independent-creation defence.
[ ] Expect open source compliance questions to surface during code review, whether or not anybody pleaded them.
[ ] Address the fair use record early where interface code is at issue, per Google LLC v. Oracle America, Inc..

Trademark and false advertising

[ ] Expect marketing, consumer research, and survey material to dominate rather than technical documents.
[ ] Expect the defendant's internal documents about the plaintiff's mark to be decisive.
[ ] Expect sales and channel data for the accounting under 15 U.S.C. § 1117.
[ ] Expect fewer source code issues and more third-party discovery against agencies and platforms.

Twelve failures that recur

[ ] Hold issued but auto-delete never suspended. The most common single failure, and the most damaging.
[ ] Hold notice sent to a department rather than to named people. Compliance in nobody.
[ ] Chat platforms omitted from the hold. The candid material is exactly where it was not preserved.
[ ] Departing custodian's device reimaged on the standard schedule. Nobody decided to destroy it; the schedule did.
[ ] Protocol negotiated before the data map exists. Every downstream commitment rests on a guess.
[ ] Search terms agreed without hit counts. A cost accepted blind and enforced strictly.
[ ] No 502(d) order. The party then litigates the quality of its own privilege review.
[ ] Privilege log format left to later. The most expensive deferral available.
[ ] Prosecution bar agreed without prosecution counsel. A strategy given away by somebody who did not own it.
[ ] Source code review location and printing cap agreed without asking the expert. The regime is then unusable and the renegotiation happens from weakness.
[ ] Blanket AEO designation. Invites a challenge the designating party loses, with the court's patience.
[ ] The client's own harmful documents discovered at deposition. The settlement analysis was wrong for fourteen months.

The requesting party's parallel checklist

Everything above is written from the responding party's chair. The requesting party runs a different sequence, and running it well changes what comes back.

Before serving anything

[ ] Map each request to an element you must prove, and discard any request that does not connect.
[ ] Research the opponent's systems from public sources — engineering blog posts, job advertisements naming tools, conference talks, and the product itself.
[ ] Identify the internal code name of the accused feature if you can, because it is the highest-yield search term available.
[ ] Identify the likely custodians by name from public sources before asking for a list.
[ ] Decide what you actually need from source code, since a demand for everything invites a regime designed to be unusable.

Drafting requests

[ ] Draft narrowly and specifically, because narrow requests are harder to resist and easier to enforce.
[ ] Ask for the data map itself, which most parties will provide and which makes every later request better targeted.
[ ] Ask for retention policies and hold documentation, which reveals preservation failures early.
[ ] Ask for organisational charts for the relevant teams and periods.
[ ] Ask for structured data by field rather than by document description.
[ ] Avoid omnibus requests that invite a general objection and produce nothing.

Negotiating

[ ] Insist on hit reports before agreeing to a term list, since the responding party has the counts and you do not.
[ ] Insist on the "other custodians" field if global de-duplication is used.
[ ] Insist on native production for spreadsheets and presentations.
[ ] Insist that chat production preserve conversational context.
[ ] Insist on a source code location convenient to your expert, and involve the expert in the negotiation.
[ ] Resist a prosecution bar broader than the technology at issue.
[ ] Resist a printing cap set without a good-cause mechanism.

After production

[ ] Test completeness against known documents — anything you already hold that should have been produced and was not.
[ ] Test the metadata for gaps that indicate incomplete collection.
[ ] Test date distribution for holes that indicate a retention failure.
[ ] Test custodian distribution for anyone conspicuously absent.
[ ] Challenge over-designation systematically rather than document by document.
[ ] Raise deficiencies in writing, early, and specifically.

A one-page timeline

For matters where the schedule is set at a scheduling conference and everything else follows from it.

[ ] Week 0 — trigger. Fix the date, issue the hold, suspend auto-deletion, notify IT and system owners.
[ ] Weeks 1–3. Custodian interviews. Build the data map. Identify offshore sources and flag the data protection analysis.
[ ] Weeks 2–5. Begin the client's own harmful-document review. Assess opinion reliance. Preserve any forensic evidence that degrades.
[ ] Scheduling conference. Move for the Fed. R. Evid. 502(d) order. Raise the ESI protocol and protective order timetable. Raise any special master proposal.
[ ] Weeks 4–10. Negotiate the ESI protocol. Run search term testing with hit reports across at least two rounds. Cost the proposals.
[ ] Weeks 6–12. Negotiate the protective order and the source code regime, with prosecution counsel and the reviewing expert involved.
[ ] From protocol entry. Begin rolling collection and review. Maintain the production log. Quality-control every volume.
[ ] Early. Serve third-party subpoenas, since third parties move slowly and motion practice takes months.
[ ] Mid-case. Source code review sessions, sequenced before the technical depositions.
[ ] Mid-case. Preservation designee deposition, both directions.
[ ] Before the close of fact discovery. Substantial completion, privilege log exchange, deficiency resolution, and designation challenges.
[ ] Throughout. Quarterly hold review, budget reassessment per phase, and a same-day note after every meet-and-confer.

Key Authorities at a Glance

Rules. Fed. R. Civ. P. 26 — scope, proportionality, protective orders, work product, inaccessible sources. Fed. R. Civ. P. 30 — depositions, including the corporate designee. Fed. R. Civ. P. 33 — interrogatories and contentions. Fed. R. Civ. P. 34 — production, form, and specific objections. Fed. R. Civ. P. 37 — sanctions, with subsection (e) governing lost ESI. Fed. R. Civ. P. 45 — third-party subpoenas and the undue-burden duty.

Evidence. Fed. R. Evid. 502 — inadvertent disclosure and non-waiver orders. Fed. R. Evid. 702 with Daubert v. Merrell Dow Pharmaceuticals, Inc. — expert admissibility. Fed. R. Evid. 1006 — summaries of voluminous records. Fed. R. Evid. 401 — relevance.

Preservation. Zubulake v. UBS Warburg LLC.

Privilege. Upjohn Co. v. United States; Hickman v. Taylor; In re Queen's University at Kingston.

Protective orders. In re Deutsche Bank Trust Co. Americas; U.S. Steel Corp. v. United States.

Merits. 35 U.S.C. § 284 and Halo Electronics, Inc. v. Pulse Electronics, Inc.; 35 U.S.C. § 285 and Octane Fitness, LLC v. ICON Health & Fitness, Inc.; 35 U.S.C. § 287; 35 U.S.C. § 102 with Pfaff v. Wells Electronics, Inc. and Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.; Therasense, Inc. v. Becton, Dickinson & Co. with 37 C.F.R. § 1.56; 18 U.S.C. § 1836; 15 U.S.C. § 1125; 17 U.S.C. § 107.

Cross-border. 28 U.S.C. § 1782; ZF Automotive US, Inc. v. Luxshare, Ltd.; Société Nationale Industrielle Aérospatiale v. United States District Court.

| Item | Rule or case | Phase | | --- | --- | --- | | Preservation duty and hold scope | Zubulake | 1–2 | | Control over affiliate and vendor data | Fed. R. Civ. P. 34 | 1, 3 | | Inaccessible sources | Fed. R. Civ. P. 26(b)(2)(B) | 3, 6 | | Proportionality objection | Fed. R. Civ. P. 26(b)(1) | 4, 9 | | Protective order authority | Fed. R. Civ. P. 26(c) | 7 | | In-house AEO access | U.S. Steel | 7 | | Prosecution bar | In re Deutsche Bank | 7 | | Non-waiver order | Fed. R. Evid. 502(d) | 8 | | Patent agent privilege | In re Queen's University | 8 | | Opinion reliance and waiver | Halo | 8 | | Third-party burden | Fed. R. Civ. P. 45(d) | 9 | | ESI sanctions | Fed. R. Civ. P. 37(e) | Closing |