Bro-Tech Corp. v. Thermax, Inc., Case No. 05-2330 (E.D. Pa. February 7, 2008)

In what appears to be a trade secret misappropriation case, plaintiffs found a rather creative way to obtain forensically sound copies of defendants’ electronic storage devices. Early in the case, plaintiffs obtained an order requiring defendants to return to plaintiffs all of plaintiffs’ files and then to purge the files from their possession, custody and control. One of the defendants had been found to have violated this order and the court had consequently ordered forensically sound copies of his storage devices to be provided to plaintiffs’ counsel. Defendants had retained a computer expert to review images of their storage devices in order to provide an opinion that the devices did not contain any of plaintiffs’ documents. In a subsequent deposition, the expert acknowledged that he had been instructed to ignore certain hits when conducting key word searches on the storage devices. I am certain that bystanders felt the breeze as the door sprung open.

Plaintiffs filed a motion to compel arguing that the only way that they could be certain that the court’s purge order had been followed was to review the storage devices themselves. Moreover, they argued, the decision in Synthes Spine Co. v. Walden, 232 F.R.D. 460, 463 (E.D. Pa. 2005), gave them that right. In Synthes, the court had ordered production of all materials reviewed by an expert in connection with rendering his opinion: “This Court interprets Rule 26(a)(2)(B) as requiring disclosure of all information, whether privileged or not, that a testifying expert generates, reviews, reflects upon, reads, and/or uses in connection with the formulation of his opinions, even if the testifying expert ultimately rejects the information.” Id. at 464.

That was pretty much the end of the analysis. The expert had created an issue when he testified as he did. The Synthes decision is pretty clear that if the expert reviewed it, the other side was permitted to see it. Magistrate Judge Carol Sandra Moore Wells’ only deference concerned the existence of confidential and privileged materials on these storage devices; she permitted the defendants to limit review of the images to designated counsel only.

This is an intriguing case. It suggests an avenue for obtaining mirror images of hard drives in trade secret cases, and perhaps in others as well. Because of the nature of hard drives, a simple affidavit from the user may be insufficient to show that a storage device contains no copies of a purloined document. Arguably, a computer expert conducting a forensic examination must render an opinion. By definition, the expert reviews the storage device. The rest follows from Synthes.

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