Judge: Rodney Gilstrap
Holding: Emergency Motion to Compel Source Code and Document Production GRANTED
Not a good day for Oregon lawyers across the square.
In this patent case Plaintiffs moved to compel production of (a) source code pursuant to P. R. 3-4(a) and (b) documents in response to Plaintiffs’ First Set of Requests for Production. Judge Gilstrap’s opinion provided some useful guidance on the scope of the production requirement imposed by P. R. 3-4(a), and document production in general.
Source code production
P. R. 3-4(a) provides that, with service of the invalidity contentions, “the party opposing a claim of patent infringement must produce or make available for inspection and copying:
(a) Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of an Accused Instrumentality identified by the patent claimant in its P. R. 3-1(c) chart.”
Plaintiffs asked that the Court compel Vigilant to comply with P. R. 3-4(a) by producing its source code. In response, Vigilant argued that the plain text of P. R. 3-4(a) mentions “source code” but does not require its production because the disjunctive “or” authorizes seven distinct categories of documents by which Vigilant can meet P. R. 3-4(a). Thus, Vigilant contended, it is not obligated to produce source code because the Plaintiffs have not explained why source code is necessitated in addition to Vigilant’s production of other documents thus far.
You can sort of see where this is headed, can't you?
"The Court rejects Vigilant’s narrow reading of the local patent rules," Judge Gilstrap wrote. "Vigilant’s “grammatical” opposition to producing its source code would, if accepted by the Court, likely close the door to the production of source code in this and all future patent infringement cases." Supporting Judge Gilstrap’s conclusion, he noted, was that the United States District Courts for the Northern District of California and Southern District of California had addressed the scope of their respective Patent Local Rule 3.4(a), which are nearly identical to the Eastern District’s P. R. 3-4(a) and which were, he observed “the source from which this District’s P. R. 3-4(a) was originally crafted” and had held that source code is required to be produced. (Cites to SD Cal. and ND Cal. cases omitted). “This Court agrees with its sister courts in California,” Judge Gilstrap concluded. “This District’s P. R. 3-4(a) requires the alleged infringer to produce any and all documents describing the operation of any aspects or elements of an accused instrumentality. P. R. 3-4(a) clearly covers source code, regardless of what additional materials may exist to disclose the functionality of the technology at issue. Indeed, the local patent rules mitigate the 'tension between the necessity for orderly and complete discovery on the one hand, and the desire of litigants to attain important tactical advantages by delaying or avoiding disclosures of key elements of their case' on the other hand.” (Citation omitted). He continued:
Importantly, the patent local rules “are not like other forms of discovery which require a formal request by the opposing party. Rather, it is the responsibility of the party itself to make disclosures that satisfy the Rules.” Cryptography Research, Inc. v. Visa Int’l Serv. Ass’n, 2005 U.S. Dist. LEXIS 37013, 2005 WL 1787421 at *3 (N.D. Cal. July 27, 2005). Vigilant’s bare minimum production shirks this responsibility and its attempt to use a grammatically technical reading of P. R. 3-4(a) as a shield to avoid production of its source code offends the discovery principles driving this District’s patent rules. P. R. 3-4(a) requires Vigilant to produce more than the bare minimum of what it believes is sufficient, including but not limited to any and all source code, specifications, schematics, flow charts, artwork, formulas, or other documentation in its possession.
The Court went on to note that while Vigilant argued that Plaintiffs had not detailed deficiencies in Vigilant’s production thus far, “it is Vigilant that has the burden to explain how its document production thus far satisfies P. R. 3-4(a). This it has clearly failed to do.” Vigilant was obligated to produce “all source code, specifications, schematics, flow charts, artwork, formulas, or other documentation as required by P. R. 3-4(a) in its possession.” Such documents were relevant to the Plaintiffs’ claim of infringement and Vigilant "did not advance any argument why such obligation is irrelevant, overly broad, or unduly burdensome or oppressive." Accordingly, the Court granted Plaintiffs’ motion to compel Vigilant to produce all source code, specifications, schematics, flow charts, artwork, formulas, or other documentation as required by P. R. 3-4(a) in its possession.
Next up was the Plaintiffs’ motion to compel Vigilant to produce all non-privileged documents responsive to Plaintiffs’ document requests. “In its Motion,” the Court wrote, “Plaintiffs specifically mapped each request for production to topics related to their patent infringement claims against Vigilant. The Court finds these topics relevant to the Plaintiffs’ claims of infringement. That having occurred, the burden shifts to Vigilant to demonstrate why the discovery is irrelevant, overly broad, or unduly burdensome or oppressive.”
In this case, the opinion explained that Vigilant indicated to Plaintiffs that it had collected several hundred thousand pages of responsive documents, but refused to produce any documents unless Plaintiffs agreed to pay the production costs. Vigilant advanced two reasons to justify its position. First, Vigilant asserted that because nothing requires it to produce source code, an “offer to produce predicated upon a recompensing payment scarcely arises to the level of rebellious behavior that Plaintiffs portray.” Second, Vigilant asserted that such production would be expensive as the cost exceeds $10,000. Judge Gilstrap rejected this argument, noting that Vigilant had not provided any evidence in support of its asserted cost figure. Nor had it considered the discovery cost against “the needs of the case, the prior discovery in the case, the amount in controversy, and the importance of the issues at stake.” In short, it had not argued that the burden or expense outweighed the likely benefit of the discovery, nor that the court should shift costs - just (Spinal Tap-like, I have to observe) it just noted the numerical cost it attributed to the production. Accordingly, the Court granted Plaintiffs’ motion to compel Vigilant to produce all non-privileged documents in response to Plaintiffs’ First Set of Requests for Production as well.
Judge Gilstrap went on to make some statements regarding discovery in general:
[T]his Court reaffirms the principle of broad and liberal discovery underlying P. R. 3-4(a). This Court rejects the notion that P. R. 3-4(a) provides an excuse to withhold source code if some other material speaks to functionality. Rather, P. R. 3-4(a) imposes an affirmative obligation on the accused infringer to produce source code and all other relevant materials reasonably needed for the Plaintiff to understand for itself how the technology at issue operates and functions. Vigilant has failed to meet the duty imposed on it by P. R. 3-4(a) and has offered only a threadbare excuse that would, if accepted, vitiate the rule altogether.
Accordingly, Judge Gilstrap ordered the source code and documentation to be produced within ten days. He also ordered Vigilant to reimburse Plaintiffs for their costs and fees in bringing the motion, up to $10,000, and granted the Plaintiff’s request to order Vigilant to produce its 30(b)(6) witness in Dallas “to mitigate the prejudice caused by Vigilant’s discovery delay.” Finally, the Court observed the following:
As an additional insight into the Court’s conclusions set forth above, the Court is convinced that Vigilant’s conduct is indefensible. The Court has not discussed herein other actions of Vigilant in this case which if reviewed specifically would only confirm this opinion. If Vigilant continues to pursue a similar approach in the future, it (and its counsel) should be prepared to show cause why sanctions should not be imposed.