IP Discovery and Source Code Review Toolkit: Holds, Protocols, Protective Orders, and Sanctions

By Casey Scott McKay · 2026-03-28

The evidence that decides an intellectual property case was written by an engineer who had no idea it would be read in court. Whether it still exists depends on a decision somebody made in the fortnight after a demand letter arrived. This toolkit assembles the working material for discovery in intellectual property disputes, from either side. It covers the preservation trigger and a hold that reaches chat platforms and ticketing systems rather than email alone, and the proportionality objection that only works when made with numbers. It works through the ESI protocol clause by clause, the protective order tiers, and the source code review regime that determines whether an expert can actually do the work. It closes with the prosecution bar, privilege and clawback practice, the sanctions framework as it now stands, clause language, and the failures that recur.

IP and Technology > Patent Litigation | Toolkit | Published 28 March 2026 - Updated 30 July 2026 | Casey Scott McKay - marksy.us

Summary. The evidence that decides an intellectual property case was written by engineers who never imagined litigation, and whether it survives depends on what happened in the fortnight after a demand letter. This toolkit covers the preservation trigger and a hold that reaches chat, ticketing, and wikis; proportionality objections made with numbers; the ESI protocol clause by clause; protective order tiers and the source code review regime; the prosecution bar; privilege and clawback; and the sanctions framework as it now stands.

Keywords: IP discovery · litigation hold · preservation trigger · auto-deletion · ESI protocol · custodian selection · search term testing · technology assisted review · protective order tiers · source code room · prosecution bar · printing caps · non-waiver orders · privilege log · spoliation · third-party subpoenas

Start Here

Four facts shape discovery in intellectual property disputes and are worth stating before anything else.

The evidence is engineering exhaust. Design reviews, code comments, ticket descriptions, chat threads, and internal presentations, written quickly, by people describing what they built to colleagues who understood them. It is more candid than anything a lawyer would produce and it is where cases are won.

Preservation decides what survives. The duty attaches when litigation is reasonably anticipated, which in this field is frequently a demand letter, and the destruction that follows is almost never deliberate: a retention policy purges chat after thirty days, a departing engineer's laptop is reimaged on schedule, a backup rotation runs.

The cost is asymmetric. In an assertion case the defendant holds the products, the engineers, the sales data, and the code, while the plaintiff holds a patent file. That asymmetry is the economic engine of the practice and the reason proportionality arguments matter.

And source code is a legal regime, not a technical one. The conditions under which one party's experts read another's code are negotiated, ordered, and enforced — and negotiated at a point when nobody yet knows what they need.

Four questions organise the work.

When did the duty attach, and what was done?

Is the scope proportional, and can that be shown with numbers?

Does the protective order permit the expert to work?

And what does the prosecution bar actually cover?

See The Case Is in the Files for the doctrinal treatment, Managing Discovery in an IP Dispute for the sequence, and the IP Discovery Checklist for the working list.

Part one: preservation

Fix the trigger honestly. A demand letter, an indemnity request from a customer, an instruction to obtain a freedom-to-operate opinion, a departing employee concern, or an internal escalation about a competitor's patent. The standard is objective and the client's own emails will supply the date.

Document the analysis contemporaneously in a short memorandum: the trigger, the reasoning, and the steps taken.

Name the custodians individually. A notice to "the engineering organisation" produces compliance in nobody; a notice to eleven named people who understand why they are listed produces it in most.

Describe the systems, not the categories. Named mailboxes, named chat channels and direct messages, named ticketing projects, named wiki spaces, named repositories, named shared drive paths.

Send the parallel notice to IT and to every system owner, instructing suspension of automatic deletion. This is the most important message in the sequence and the one most often omitted.

Suspend the deprovisioning schedule for departing employees, the backup rotation where backups are the only source, and any ephemeral messaging setting in the affected teams.

Interview the custodians. Fifteen minutes each surfaces systems the IT inventory missed, personal device use, former colleagues holding material, and legacy shared drives.

Maintain the hold. Quarterly review, reissue on scope change, and capture of departing custodians' material before deprovisioning.

And know that the frontier is chat and ephemeral messaging. Courts have treated disappearing-message settings left enabled during litigation severely, and a company that permits them must disable them when the duty attaches.

Part two: proportionality, and the objection that works

The 2015 amendments moved proportionality into the definition of scope in Fed. R. Civ. P. 26(b)(1), and the change is under-used.

Six factors: the importance of the issues, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense outweighs the likely benefit.

Relative access cuts against the defendant in almost every intellectual property case, because the accused infringer holds the technical evidence. That factor supports production and should be conceded rather than fought.

Amount in controversy is the assertion-entity battleground. Where a damages theory implies two million dollars and the discovery would cost three, the objection writes itself — and it is strengthened by pinning the plaintiff to a contention early.

Burden versus benefit is where custodian and date-range fights are won, and only by a party that quantifies: how many documents, how many review hours, at what rate, for what marginal yield.

Make it specific. Fed. R. Civ. P. 34 requires objections to state whether responsive material is withheld on their basis. "Objection, not proportional" is worth nothing; a declaration from the vendor with volumes and costs is worth a ruling.

Address inaccessible sources expressly under Fed. R. Civ. P. 26(b)(2)(B) — backups, disaster recovery, legacy systems — with a good-cause mechanism rather than a blanket refusal.

And bring the numbers to the meet-and-confer, with a written agenda circulated in advance, because the side that arrives with a document sets the frame and the side that concedes the small points visibly earns sympathy on the remaining ones.

Part three: the ESI protocol

Sources. Enumerate by system, not by category. Email, chat with the unit of production defined, ticketing including comment history, wikis with version history, design and prototyping tools, code hosting with commit and pull request history, video conferencing recordings and transcripts, shared drives including legacy paths, and structured data systems specified by field and query.

Custodians. Build from the substantive theory rather than the org chart, tier them — first tier collected and reviewed, second collected and held, third reserved — and include an addition mechanism tied to produced documents with a numeric cap.

Date ranges per issue. Conception and development for invalidity; design and launch for infringement; notice-forward for willfulness; the damages period for financial data. A single global range is wrong for some custodian and over-broad for another.

Search methodology. Hit reports before agreeing any term list, with total hits, unique hits, and family counts. Iteration across at least two rounds. Where technology assisted review is used, the training approach, validation methodology, recall target, and the degree of transparency. Sample the null set and retain the result.

Form of production. Native for spreadsheets, presentations with speaker notes, and anything with tracked changes or embedded content; searchable images with extracted text for the rest; chat with conversational threading preserved; structured data as delimited exports with a data dictionary; source code excluded and handled under the protective order.

Metadata fields listed expressly, including custodian, other custodians where global de-duplication is used, source system, file path, dates, participants, hash, and parent-child relationships.

Process terms. De-duplication basis chosen deliberately; thread suppression addressed; rolling production dates and a substantial completion date; privilege log format with categorical logging and a post-complaint carve-out; cost allocation for restoration and foreign collection; and a meet-and-confer requirement with a special master in complex matters.

And amendment, because a protocol negotiated before the systems were mapped will need it.

Part four: the protective order and source code

Three tiers. Confidential; Highly Confidential — Attorneys' Eyes Only; and Highly Confidential — Source Code, each with its own access list.

Name in-house access. A protective order excluding all in-house counsel from the AEO tier makes the case unmanageable for the client, who cannot evaluate settlement. Name one or two lawyers not engaged in competitive decision-making, applying U.S. Steel Corp. v. United States, and subject them to the prosecution bar.

Expert disclosure and objection, with a CV, an engagement list, a defined objection window, and stated grounds limited to genuine competitive concern.

Designation challenge with the burden on the designating party and consequences for systematic over-designation, which is endemic.

The source code machine. Standalone, non-networked, external ports disabled, in a secure room, with the supplier and location specified.

Location and hours. Requiring an expert to travel across the country for narrow windows on short notice is a cost imposition. Negotiate a location convenient to the reviewing expert and workable hours.

Scope. Tie the code made available to the accused functionality, with a mechanism to expand on a showing. Include build environments and version control history where the analysis requires them, because a static snapshot answers few of the questions an expert must answer.

Tools. An approved list installed by the producing party — text search, cross-reference, comparison, and build tooling are ordinary; anything with network capability will be refused.

Notes and devices. Paper notes permitted and designated at the source code tier; no cameras, recording devices, or personal computing equipment.

Printing. A cap expressed as a total and per request, with a good-cause mechanism, the producing party printing and bates-stamping within a defined period, secure storage, a copy log, and express provisions for use in expert reports, depositions, and at trial — the last of which is usually omitted and creates a problem at the pretrial conference.

And review session logs, which become evidence in disputes about whether the reviewing party used the access it demanded.

Part five: the prosecution bar

What it does. Prevents personnel who access the producing party's confidential technical information from participating in patent prosecution — drafting or amending claims — in the relevant technical field for a defined period. The rationale is that a lawyer who has seen a competitor's unreleased architecture should not be shaping claims that might read on it.

The standard. In re Deutsche Bank Trust Co. Americas asks whether counsel is engaged in competitive decision-making and balances the risk of inadvertent use against the harm of denying counsel of choice.

Subject matter scope tied to the technology at issue, defined by reference to the accused products or the patent's field, not to the party's entire portfolio.

Activity scope stated specifically: drafting claims, amending claims, and advising on claim scope.

Post-grant proceedings are the contested question, because claim amendment in an inter partes review is prosecution in substance. A defendant wants the bar to reach it; a plaintiff wants its litigation counsel available there. Decide expressly. See The Second Look.

Duration of one to two years from final disposition.

Personnel scope individual rather than firm-wide, with a screening provision.

And bring prosecution counsel into the negotiation, because a litigator agreeing a bar without knowing the client's continuation strategy is making somebody else's decision. See the Duty of Candor Checklist.

Part six: privilege, clawback, and production

Enter a Fed. R. Evid. 502(d) order at the scheduling conference. It is a paragraph, it removes the reasonable-steps enquiry from any waiver dispute, and its absence means a party litigates the quality of its own privilege review.

Draft the clawback separately from the order: notice, sequestration, return or destruction, no use pending resolution, and challenge with the document lodged under seal.

Design the log to be affordable. Categorical logging for defined categories, metadata-based logging for the rest, and a post-complaint carve-out, which is the largest single volume reduction available.

Address the IP-specific privilege categories: patent agent communications, recognised in In re Queen's University at Kingston; foreign patent attorney communications, treated inconsistently; and common interest arrangements between co-defendants, which need a written agreement before the communications happen. See Protecting Privilege in an IP Matter and the IP Privilege Protection Checklist.

Model the opinion waiver before electing. Reliance on an opinion to defeat willfulness under Halo Electronics, Inc. v. Pulse Electronics, Inc. waives privilege over the opinion and, in many courts, related advice. The election deadline is usually set by the scheduling order, and the decision should be taken with the consequences quantified.

Produce on a rolling basis with a production log recording volume, date, bates range, custodians, and source.

Quality-control every volume for corrupted files, missing families, unprocessed containers, load file integrity, and privileged material.

Redact narrowly and log redactions, and designate document by document rather than volume by volume, because blanket AEO designation invites a challenge the designating party loses.

And serve third-party subpoenas early under Fed. R. Civ. P. 45 — suppliers, contract manufacturers, customers, prior employers of inventors, prior art custodians, and, in assertion cases, the litigation funder. See the Assertion and Funding Checklist.

Part seven: sanctions, realistically

Fed. R. Civ. P. 37(e) governs lost electronically stored information and displaced the inherent-authority jurisprudence that preceded it.

Curative measures require prejudice and are real: additional discovery at the spoliating party's expense, permission to present evidence about the loss, and cost shifting.

Severe measures require intent to deprive. An adverse inference instruction, a presumption, dismissal, or default is available only on that finding. Negligence, even gross negligence, is not enough, which reversed the position in several circuits and made spoliation motions substantially harder to win.

Intent is inferred from the record: deletion after a trigger, auto-deletion left running, a wiped device, ephemeral messaging left enabled, a custodian who "cleaned up" files — read together with the party's sophistication.

Non-ESI spoliation runs on inherent authority, which matters where the lost item is a prototype, a sample, or a physical device.

Protective order breach is contempt, and source code breaches have produced disqualification of counsel and exclusion of expert testimony.

And the collateral consequences exceed the formal sanction. A party explaining a preservation failure to a judge has lost the benefit of the doubt on every subsequent discovery dispute; one explaining it to a jury has lost credibility on the merits. Zubulake v. UBS Warburg LLC remains the practical reference for what reasonable steps means.

Clause bank

Hold notice — operative paragraphs. You are required to preserve, and must not delete, alter, or discard, the following, from [date] to the present: your mailbox, including deleted items; the channels and direct messages listed at Annex A in [platform]; the projects listed at Annex B in [ticketing system]; the spaces listed at Annex C in [wiki]; the repositories listed at Annex D, including branch and commit history; and the paths listed at Annex E on the shared drive. You must not use disappearing or self-deleting messages for any matter relating to [subject]. You must not remove material from any device before returning it. If you hold relevant material anywhere not listed — a personal device, a personal account, a notebook, or a system not mentioned — tell [name] immediately rather than deleting or moving it. Confirm receipt by [date].

IT and system-owner instruction. With immediate effect and until further notice, suspend for the custodians listed at Annex F: automatic deletion in [email system]; message retention expiry in [chat platform]; the deprovisioning and device reimaging schedule; backup rotation and overwriting for the periods covering [dates]; and any workspace or repository archival policy. Confirm in writing, system by system, that each suspension is in place, with the date and the person who applied it.

Proportionality objection. Responding Party objects to Request [X] as disproportionate to the needs of the case. The Request, applied across the custodians proposed, returns approximately [N] documents after de-duplication and threading. Review at contract rates of [$X] per hour, at an average of [Y] documents per hour, would cost approximately [$Z], exclusive of processing and privilege logging. Requesting Party's damages contention states a recovery of [$A]. Responding Party is withholding documents on the basis of this objection and will produce documents responsive to the narrowed scope described at [reference].

Source code review conditions. Source Code shall be made available on a standalone computer, not connected to any network, with all external ports disabled, in a secure room at [location], on [X] business days' notice, during business hours. The Producing Party shall install the analysis tools listed at Schedule [A]. The Receiving Party may take handwritten notes, which shall be designated Highly Confidential — Source Code. No camera, recording device, or personal computing equipment may be brought into the room. The Receiving Party may request printing of up to [N] pages in total and [M] pages per request, which the Producing Party shall provide, bates-stamped, within [5] business days. Printed material shall be stored in a locked facility, shall not exceed [K] copies, and shall be logged. Excerpts may be included in expert reports, used at deposition, and used at trial subject to the sealing procedures at clause [Y].

Prosecution bar. Any person who receives Highly Confidential — Source Code or Highly Confidential — Attorneys' Eyes Only technical information shall not, from the date of receipt until [two] years after final disposition, participate in the drafting or amendment of any patent claim, or advise on the scope of any patent claim, relating to [defined technology field]. This bar applies to proceedings before the Patent Trial and Appeal Board to the extent they involve amendment of claims. This bar applies to individuals and not to their firms, provided that barred individuals are screened. Nothing in this clause prevents a barred individual from participating in this litigation.

Rule 502(d) order. The production of any document, whether inadvertent or otherwise, in this proceeding shall not constitute a waiver of any privilege or protection in this or in any other federal or state proceeding. This Order is entered under Federal Rule of Evidence 502(d). Nothing in this Order requires any party to conduct a privilege review before production, and no party shall argue that any party's review was inadequate. On notice from the producing party, the receiving party shall sequester the document, shall not use it for any purpose, and may challenge the designation by lodging the document with the Court under seal.

Worked scenarios

The chat nobody preserved. A defendant issues a hold covering email on the day a complaint is served. The relevant discussions happened in a chat platform with a thirty-day retention default that nobody suspended. Four months of the design period is gone. The loss is not intentional and the severe sanctions under Fed. R. Civ. P. 37(e)(2) are unavailable, but the curative measures are not: additional discovery at the defendant's cost, and permission for the plaintiff to present evidence about the loss. The jury hears about it. The parallel notice to IT would have taken an hour.

The proportionality argument that worked. A defendant faces a demand for twenty-two custodians over eight years. It runs the collection, obtains volumes, and files an opposition with a vendor declaration: 640,000 documents, review at contract rates costing $890,000, against a damages contention of $1.8 million. The court adopts a phased approach limited to the accused feature. The plaintiff's demand was not unreasonable in the abstract; it was unreasonable against the numbers, and only the numbers showed it.

The code review nobody could use. A protective order requires review at the producing party's counsel's offices in a distant city, on three days' notice, during a six-hour window, with a 300-page printing cap and no build environment. The reviewing expert needs to trace execution through a large codebase. What would take a week on a normal machine takes two months of travel, and the expert report is filed late and thin. The terms were agreed by a junior lawyer from a template without asking the expert what the work required.

The prosecution bar that took the wrong lawyer. A plaintiff agrees a bar covering "any patent relating to the technology of the patents-in-suit" for three years, firm-wide, including post-grant proceedings. Its lead litigator is also its principal prosecution counsel and has three continuations pending. The bar removes them from the portfolio work. Nobody asked prosecution counsel before agreeing.

Failures that recur

A hold covering email and nothing else.

Auto-deletion never suspended, which is the single most common preservation failure.

Departing custodians' devices reimaged on the standard schedule.

A protocol negotiated before the systems were mapped.

Search terms agreed without hit counts.

No Fed. R. Evid. 502(d) order.

Privilege log format deferred, which is the most expensive deferral available.

Source code terms agreed without asking the expert.

No trial provisions for code excerpts, discovered at the pretrial conference.

A prosecution bar agreed without prosecution counsel.

Blanket AEO designation across a whole production.

Deletion after discovery of a problem, converting a manageable issue into a spoliation finding.

And the client's own harmful documents found at a deposition rather than in month two, having driven the settlement analysis in the wrong direction for a year.

Part eight: what the evidence has to prove

A discovery plan built without an element map produces volume rather than proof.

Infringement. Technical documents, source code, design specifications, test results, and — systematically undervalued — marketing material, which is written to sell the product and is frequently more explicit about what it does than the engineering documentation.

Willfulness. Knowledge of the patent and the character of the conduct afterwards. Under Halo Electronics, Inc. v. Pulse Electronics, Inc. the enquiry is about egregious conduct, which makes the internal record decisive: the email forwarding the patent, the meeting invitation titled "competitor IP review", the decision to proceed without analysis.

Damages. Sales data, pricing records, cost accounting, customer agreements, marketing spend, competitive analyses, and comparable licences, which drive the reasonable royalty analysis under Georgia-Pacific Corp. v. United States Plywood Corp. with the apportionment discipline of LaserDynamics, Inc. v. Quanta Computer, Inc.. Lost profits under Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. require demand, absence of acceptable substitutes, capacity, and profit — each a discovery target.

Invalidity. Increasingly from the parties' own files rather than from patent databases: internal development records predating the priority date, product releases, conference presentations, and sales records bearing on the on-sale bar.

Inequitable conduct. The prosecution file, communications with the patent attorney, and internal knowledge of prior art, against the Therasense, Inc. v. Becton, Dickinson & Co. standard.

Trade secret misappropriation. Access records, download logs, device forensics, and the timeline — which in a departing employee case is usually the whole case.

Software copyright. The code, the development history, and access evidence, with the substantial similarity and fair use analysis after Google LLC v. Oracle America, Inc..

And trademark, where consumer-facing material and the defendant's own internal documents acknowledging confusion do more work than any survey.

Part nine: economics and sequencing

Review is the dominant cost line, and it scales with custodians and date range rather than with the merits.

Source code review is expert time, not document volume, and is the line most often omitted from a budget entirely.

Privilege logging is disproportionately expensive relative to its yield, which is why the format belongs in the protocol.

The asymmetry is structural in assertion cases, and it is why the three highest-value defensive moves are a proportionality objection made with real numbers, an early damages contention that anchors it, and a stay pending review.

Sequence deliberately. Map the systems before negotiating the protocol; run hit counts before agreeing terms; enter the non-waiver order at the scheduling conference; decide opinion reliance before building the privilege log; and involve the reviewing expert before agreeing the source code terms.

Front-load the client's own document review. Searching for the harmful documents — the competitive analysis, the design review, the email forwarding the patent — before the other side finds them is the highest-value early activity in any intellectual property matter, and the alternative is learning about them from a deposition exhibit in month fourteen.

Serve third-party subpoenas early, because third parties move slowly and motion practice takes months.

And notice the preservation designee under Fed. R. Civ. P. 30(b)(6) in both directions, because the answer shapes everything downstream and preparing your own designee properly is a distinct exercise from preparing them on their own knowledge.

Part ten: cross-border collection

Assess data protection before collecting, not after. Personal data in custodian email transferred out of the European Economic Area or the United Kingdom requires a lawful basis and a transfer mechanism, and litigation is a recognised but not unlimited justification.

Minimise at source. Filter in-region by date, custodian, and search term, and transfer only what survives — which is both good practice and the argument that makes the transfer defensible.

Pseudonymise irrelevant personal data, and negotiate a protective order provision recognising the treatment so the receiving party does not read redaction as concealment.

Check for blocking statutes and, where one applies, raise it early and propose a mechanism. Courts applying Société Nationale Industrielle Aérospatiale v. United States District Court balance the interests and frequently order production anyway, leaving the party to choose which law to breach — but a party that raised the issue at the outset is in a very different position from one that raises it as an excuse for late production.

Consider the Hague Evidence Convention for material genuinely unobtainable from a party, understanding that many contracting states have reserved against pre-trial document discovery and that the process takes months.

Use 28 U.S.C. § 1782 in the other direction where a foreign proceeding needs United States evidence, noting the narrowing in ZF Automotive US, Inc. v. Luxshare, Ltd..

Account for Chinese data export rules and state secrets exposure where collection touches a mainland entity, and do the analysis before the ESI protocol commits the party to producing.

And build the offshore analysis into the data map, because a protocol negotiated in ignorance of the transfer constraints will need renegotiation from a weaker position.

Documents that must exist

For each item: does it exist, who owns it, and can it be produced in a day?

The trigger memorandum, dated, with the reasoning.
The hold notice, with the custodian list, the system-specific annexes, and the acknowledgement record.
The IT and system-owner suspension confirmations, system by system, with dates.
The custodian interview notes.
The data map: system, contents, administrator, retention, collection method, export format, volume, and date coverage.
The custodian and date-range proposal with its costing.
The hit reports for every search term, across every iteration.
The null set sample and its richness result.
The search methodology memorandum, written contemporaneously.
The executed ESI protocol and any amendments.
The protective order, the expert disclosure and objection record, and the AEO access list.
The source code review terms, the approved tool list, the session log, and the printing log.
The prosecution bar, with the record of prosecution counsel's input.
The Rule 502(d) order and the clawback agreement.
The privilege log and its agreed format.
The production log: volume, date, bates range, custodians, sources, deficiencies.
The redaction log.
Third-party subpoena records and responses.
Forensic acquisition records with chain of custody.
The budget, reassessed per phase.

One paragraph to remember

Preservation decides what exists; the hold has to reach chat, ticketing, wikis, and repositories, and somebody has to tell IT to suspend the auto-delete in the same week. Map the systems before negotiating the protocol, run hit counts before agreeing terms, and make the proportionality objection with volumes, hours, and rates rather than adjectives. Enter the non-waiver order at the scheduling conference and agree the privilege log format in the protocol. Ask the expert what the source code review actually requires before agreeing the location, the tools, and the printing cap. Negotiate the prosecution bar with prosecution counsel in the room. And when a preservation problem is discovered, preserve and disclose it — because under the current rule the severe sanctions require intent, and deleting the evidence is how a party supplies it.

The requesting party's short list

Everything above is written from the responding chair. The requesting party runs a different sequence.

Map each request to an element you must prove, and discard anything that does not connect.

Research the opponent's systems from public sources — engineering blog posts, job advertisements naming tools, conference talks — before asking what they use.

Find the internal code name of the accused feature if you can, because it is the highest-yield search term available and it will not appear in the pleadings.

Ask for the data map itself, and for retention policies and hold documentation, which reveals preservation failures early.

Insist on hit reports before agreeing a term list, since the responding party has the counts and you do not.

Insist on the "other custodians" field where global de-duplication is used, and on native production for spreadsheets and presentations.

Involve your expert before agreeing source code terms, and resist a prosecution bar broader than the technology at issue.

Test completeness after production: known documents that should have appeared, metadata gaps indicating incomplete collection, date holes indicating retention failures, and custodians conspicuously absent.

Challenge over-designation systematically rather than document by document.

And raise deficiencies early, specifically, and in writing, because a dispute raised in month three is a schedule question and the same dispute in month eleven reads as an attempt to derail.

A note on the corporate designee

The preservation deposition under Fed. R. Civ. P. 30(b)(6) deserves separate attention because it decides more cases than it should.

Notice the topics precisely: hold issuance and date, scope and custodians, systems covered, auto-deletion suspension, acknowledgement and monitoring, and any loss identified.

Prepare the designee on the topics, not on their own knowledge. A designee who says "I don't know" on a noticed topic has failed to satisfy the rule and has created a motion.

Choose the right person. The designee is frequently from information technology rather than legal, which is usually correct, and they must be prepared to speak to the process rather than to the legal analysis.

Expect the questions to be forensic: what was the default retention on each system, when was it suspended, who suspended it, and can you produce the confirmation.

And expect the answer to shape everything. A clean preservation designee deposition ends the spoliation line of enquiry; a poor one starts a motion, and the motion frequently produces more discovery about discovery than the underlying dispute justifies.

A closing observation

The uncomfortable conclusion of this practice is that the most valuable discovery work happens years before the case.

A company whose engineers understand that design documents comparing products to competitors will be read aloud in court writes different design documents — not dishonest ones, but careful ones, describing what the product does rather than whose product it resembles. A company whose retention policy is defensible and consistently applied has fewer spoliation problems than one whose policy is aggressive and honoured erratically. A company that runs freedom-to-operate analysis and documents it has a willfulness defence that a company relying on silence does not.

None of that is discovery practice. All of it determines discovery outcomes, and none of it can be created after a demand letter arrives.

One-day diagnostic

Pick any active matter and ask five questions. What date was the preservation duty triggered, and where is the memorandum recording the reasoning? Which systems had automatic deletion suspended, on what date, confirmed by whom? Can the party produce hit reports for every agreed search term? Has the reviewing expert seen and approved the source code terms before they were signed? And is there a Rule 502(d) order on the docket?

A matter answering all five is being run properly. A matter answering two is the ordinary case. A matter that cannot answer the second has a spoliation motion in its future that nobody has yet written.

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) for lost ESI. Fed. R. Civ. P. 45 — third-party subpoenas.

Evidence. Fed. R. Evid. 502; Fed. R. Evid. 702 with Daubert v. Merrell Dow Pharmaceuticals, Inc.; Fed. R. Evid. 1006; Fed. R. Evid. 401.

Preservation and privilege. Zubulake v. UBS Warburg LLC; 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 provisions the evidence serves. 35 U.S.C. § 284 with Halo Electronics, Inc. v. Pulse Electronics, Inc.; 35 U.S.C. § 285 with Octane Fitness, LLC v. ICON Health & Fitness, Inc.; 35 U.S.C. § 102 with Pfaff v. Wells Electronics, Inc. and Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.; 35 U.S.C. § 287; Therasense, Inc. v. Becton, Dickinson & Co. with 37 C.F.R. § 1.56; 18 U.S.C. § 1836; Google LLC v. Oracle America, Inc..

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

| Authority | Governs | Practical consequence | | --- | --- | --- | | Fed. R. Civ. P. 37(e) | ESI loss | Intent required for adverse inference | | Zubulake | Hold practice | Counsel must verify, not just notify | | Fed. R. Civ. P. 26(b)(1) | Proportionality | The objection must carry numbers | | Fed. R. Civ. P. 34 | Production | Objections must state what is withheld | | Fed. R. Evid. 502(d) | Non-waiver | Enter it at the scheduling conference | | In re Deutsche Bank | Prosecution bar | Scope, duration, and exemption | | U.S. Steel | Competitive decision-making | Which in-house lawyers get AEO | | In re Queen's University | Patent agent privilege | Log treatment of agent communications | | Halo | Willfulness | Opinion reliance and waiver timing | | Fed. R. Civ. P. 45 | Third parties | Funders, suppliers, prior employers | | Fed. R. Evid. 1006 | Summaries | How code analysis reaches a jury | | 28 U.S.C. § 1782 | Foreign proceedings | US evidence for foreign disputes |