SOURCE: Wolf Greenfield

November 30, 2006 10:03 ET

New Federal E-Discovery Rules Change Patent Litigation

Hidden Metadata in Microsoft and PDF Documents Can Create Landmines, Wolf Greenfield Lawyer Says

BOSTON, MA -- (MARKET WIRE) -- November 30, 2006 -- The new federal rules on electronically stored information are changing the litigation game -- especially for patent suits, Adam Kessel, a litigator with Wolf, Greenfield & Sacks, P.C., a Boston intellectual property law firm, writes in the October issue of New England In-House.

The new rules take effect on December 1, so companies and their law firms should "adopt best practices now to avoid being put at a disadvantage in future litigation," he writes.

Understanding metadata is crucial. Metadata, which describes other data, is usually embedded in electronic documents. Metadata can include information such as when and by whom a document was last modified and prior drafts of a document, enabling people to see all edits.

Under the new rules, parties have "the right to request documents in their 'native' format, with all metadata preserved," he writes.

The rules formalize a trend in the case law. "A district court in Illinois recently ordered a patent infringement defendant to produce documents in native format that it had already produced once in Tagged Image File Format (TIFF), which is essentially an electronic equivalent of a paper printout of data."

Even PDF files aren't always a safe format for metadata since some metadata is maintained by the computer operating system and thus applies to all files. PDF files may also contain custom metadata similar to the metadata contained in Microsoft Office documents.

"Attorneys must thus exercise caution in avoiding inadvertent disclosure, even for PDFs," Kessel writes.

The new rules require scrupulously preserving electronic information.

"When a party anticipates litigation, it is imperative to halt any automatic document destruction of expiration systems in order to be protected by the [good faith] safe harbor. It is unlikely that a court will construe good faith to include inaction when a party knows relevant information may be destroyed automatically," Kessel concludes.

The article can be found at and Kessel can be contacted at

Founded in 1927, Wolf Greenfield in Boston ( is one of the most experienced law firms specializing in intellectual property law, including patents, trademarks, copyrights, licensing, trade secrets and litigation.

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