Xerox Corp. v. International Business Machines Corp.
United States District Court for the Southern District of New York · 1977 · Civil Procedure
Civil ProcedureDiscoveryWork Product DoctrineFed. R. Civ. P. 26(b)(3)attorney work productsubstantial needundue hardshipdepositions
Facts
In March and April 1970, IBM in-house attorney Elmer Galbi interviewed 37 IBM employees in anticipation of litigation by Xerox and made notes of those interviews. Xerox sought information about the path and use of its alleged trade secrets within IBM, but it was unable to obtain the information it wanted through depositions of many of those employees and of Galbi. In an earlier ruling, the court ordered production of notes for 23 deposed witnesses whose recollections were inadequate and stated that notes for the remaining 14 could be sought later if Xerox deposed them and encountered the same problem. Xerox later deposed 10 of those 14 employees, asserted that one other was deceased, and sought the balance of the Galbi Notes.
Issue
Whether Xerox had shown sufficient substantial need and undue hardship under Rule 26(b)(3) to compel production of the remaining Galbi Notes, including notes relating to employees not yet deposed and notes concerning Edward W. Brown, whom IBM claimed had given legal assistance and advice.
Rule
Under Rule 26(b)(3), materials prepared in anticipation of litigation may be discovered when the requesting party shows substantial need for the materials and inability without undue hardship to obtain their substantial equivalent by other means, while the court must protect privileged portions such as attorney mental impressions, conclusions, opinions, or legal theories through review and expurgation where appropriate.
🔒
See the holding & full analysis
Create a free KwikCourt account to unlock the rest of this brief — and practice the case.
The court's holding and reasoning
Doctrine tests, pitfalls & exam hypotheticals
10 practice questions + 4 AI-graded essays on this case
One of 10 multiple-choice questions for this case. Pick an answer to see why.
In a trade-secret suit in Chicago federal court, North Harbor Components seeks notes taken by Meridian Systems' in-house counsel during interviews of 30 employees conducted when litigation was first threatened in 2016. North Harbor has since deposed 27 of those employees, but most testified that they could not remember how the disputed design files moved through the company.
Should the court most likely compel production of the remaining interview notes under Rule 26(b)(3)?
Explanation. Rule 26(b)(3) permits discovery of materials prepared in anticipation of litigation only on a showing of substantial need and inability without undue hardship to obtain their substantial equivalent by other means. The majority found that after the requesting party had deposed most of the interviewed employees and still could not get the information because recollections were poor, alternative means had been exhausted. Production is not automatic or absolute, and the court must still protect mental impressions, conclusions, opinions, or legal theories through review and redaction if appropriate. (Derived from Xerox Corp. v. International Business Machines Corp. (n.d.).)