Image: Kaylee Walstad, EDRM[Editor’s Note: This article wasfirst published May 17, 2023and EDRM is grateful to Robert Keeling, Chair of the EDRM Global Advisory Council and our Trusted Partner,Sidley, for permission to republish.]This Sidley Update addresses the following recent developments and court decisions involvinge-discovery issues:an order from the U.S. District Court for the District of Maryland denying a motionin limineto exclude from trial all evidence relating to an email that was produced only as a forwarded copy (as well as an alleged attachment to that email) finding that Plaintiff had satisfied the prima facie showing required under Fed. R. Evid. 901 to submit the issue of the document’s authenticity to the jurya ruling from the U.S. District Court for the District of Nebraska finding that a narrowly tailored connectivity analysis of one Defendant’s electronic devices conducted by an expert, as opposed to compelling production of a full forensic mirror image of the devices, was proportional to the needs of the case for purposes of determining whether the devices contained evidence that trade secrets were misappropriated from Plaintiff’s devicesa decision from the U.S. District Court for the Southern District of New York finding that a corporate Defendant did not have possession, custody, or control over the personal Google accounts of one of its employees who lived in China, where Plaintiff did not address international laws on the issue of control or otherwise demonstrate that Defendant had the “practical ability” to coerce the employee into complying with a request for the personal accountan opinion from the U.S. District Court

In so holding, the Federal Circuit found that the "district court did not abuse its discretion in holding that the source code printout does not constitute a business record admissible under Rule 803(6)."Next, Wi-LAN argued that the source code printout was admissible under Federal Rule of Evidence 901(b)(4). Under Rule 901(b)(4), a record can be admitted into evidence if "[t]he appearance, contents, substance, internal patterns, or other distinctive characteristics of the item, taken together with all the circumstances... support a finding that the item is what the proponent claims it is."

The jury cannot see evidence unless it is authenticated and admitted. Federal Rule of Evidence 901(a) (and numerous state analogs) requires the proponent of evidence to “produce evidence sufficient to support a finding that the item is what the proponent claims it is.” This standard imposes a relatively low bar, requiring “[o]nly a prima facie showing of genuineness . . . ; the task of deciding the evidence’s true authenticity and probative value is left to the jury.”

On Dec. 1, 2017, important amendments regarding the authentication of digital evidence under Rule 902 of the Federal Rules of Evidence took effect that make it easier to authenticate certain forms of digital evidence before trial via a written certification from a custodian or other qualified person in lieu of testimony by a witness.A proponent of evidence must ordinarily authenticate such evidence by providing proof “sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Rule 901(b) sets out various examples of evidence that would satisfy the authentication requirement, the most common example being testimony of a witness with knowledge that the item is what it is claimed to be. Fed. R. Evid. 901(b)(1).

The ancient document exception set out in the Rule provides one such exception.Text and Origin of the Ancient Document Exception Rule 803(16) currently provides that a “statement in a document that is at least 20 years old and whose authenticity is established” is not excluded by the hearsay rule. FRE Rule 901(b)(8) provides a method for authenticating such a document when there is “evidence that it: (A) is in a condition that creates no suspicion about its authenticity; (B) was in a place where, if authentic, it would likely be; and (C) is at least 20 years old when offered.” By way of background, the common law traditionally allowed for authenticating certain documents based on their age on the theory that “old” documents were inherently reliable when they are found in a place where they should be located.

nary photographs and Google Earth satellite imagery. Growing concern surrounding emerging technology that allows digital modification of online images has led some courts to apply evidentiary rules more stringently against parties seeking to rely upon Google Earth images. For instance, courts are analyzing closely the markers and labels of each image, with particular emphasis on date markers. Thus, for parties who wish to use Google Earth images in a litigation context, it is important to remain mindful of the potential challenges associated with the admissibility of such images.Recent Decisions Regarding Admissibility of Google Earth ImagesWhile Google Earth uses some automatic labeling features, it also allows users to easily insert their own markers or labels onto satellite images, an act that some courts have deemed to impair the authenticity of the image. Accordingly, litigants should be mindful when making use of such tools, as such additions may affect the image’s admissibility.Federal Rule of Evidence 901(b)(9) provides that evidence “describing a process or system and showing that it produces an accurate result” satisfies the requirement of authentication necessary for admissibility. Some courts have used this or similar language to exclude Google Earth satellite images that contain labels and markers in instances where no evidence has been presented to prove the accuracy of such labels and/or markers.For example, an Illinois appellate court recently upheld a trial court’s decision to preclude consideration Google Earth satellite images that included timestamps in connection with a motion for summary judgment. In Ory v. City of Naperville, (Ill. App. Ct. May 11, 2023), the plaintiff had fallen while walking on a pedestrian bridge and filed two claims against the City of Naperville. The plaintiff asserted that the trial court had erred in granting summary judgment in favor of the defendant because, based on various Google Earth images taken over a period of several years, the city had constr

The IPR exhibit at issue was the “Burns article,” a printed copy of an online review of an Xbox 360 controller with an indicated publication date of October 20, 2010. The Burns article had been cited as prior art during prosecution of both patents involved in the IPR. Despite its use in prosecution, the Board found that the IPR exhibit failed to meet the standard for authentication under Fed. R. Evid. 901(a), which requires that a party authenticating or identifying an item of evidence “must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” The U.S. Court of Appeals for the Federal Circuit disagreed, finding the record was sufficient to establish that the exhibit proffered in the IPR was substantively the same as the Burns article cited during prosecution.

Broad filed its Opposition to ToolGen's motion on October 8th, and ToolGen filed its Reply on October 15th.ToolGen's bases for excluding evidence including Broad's purported "best proofs" on priority were that they have not been authenticated and are thus inadmissible under FRE 901. Specifically, ToolGen raised these objections against Broad Exhibits 2526, 2530, 2533, 2535, 2536, 2563, 2565, 2566, 2581, 2582, and 2599.

Until there is a precedential opinion or other binding guidance establishing different requirements for filing settlement agreements depending on the status of the proceeding, application of this requirement may not be uniform. “AUTHENTICATION BY COMPARISON” AT THE PTABIn Valve Corp. v. Ironburg Inventions Ltd., the U.S. Court of Appeals for the Federal Circuit addressed the application and operation of the Federal Rules of Evidence in proceedings before the PTAB, criticizing the Board’s stringent application of FRE 901(a). Valve Corp. v. Ironburg Inventions Ltd., U.S. Federal Circuit Court of Appeals Nos. 20-1315, -1316, -1379 (Fed. Cir. Aug. 17, 2021) (Dyk, J.).

The government introduced five emails demonstrating a connection between various fraudulent transactions and the corporate entities used by the defendants to perpetuate the fraud. Federal Rules of Evidence Rule 901(a) provides that email evidence is properly authenticated by “evidence sufficient to support a finding that the item is what the proponent claims it is.” Authentication can be established under Rule 901(b)(1) through the “testimony of [a] witness with knowledge . . . that a matter is what it claimed to be.” In this case, however, neither the sender of the emails, Hayward Borders, nor anyone who witnessed Borders write or send the emails, testified at the trial.