Judge: Michael Schneider
Holding: Motion for Protective Order GRANTED
Protective orders are common, and orders resolving the parties' disputes as to specific provisions in protective order are also fairly routine. Unfortunately (or fortunately) the disputes are usually few enough and narrow enough that courts often resolve them by simply including the preferable provision in the final order, without an explanation of what the disputed issues were, or why the court found that provision persuasive.
That makes this morning's entry of a twelve page opinion in the Geotag litigation of particular interest, because in the order Judge Schneider identifies six disputed provisions, which he then goes on to resolve: (1) where source code will be made available; (2) what kinds of media will be allowed in the secure source code review room; (3) the format of source code production; (4) the tools available for source code analysis; (5) the burden for denying production of additional source code beyond the agreed page limitations; and (6) the scope of the patent prosecution bar. Many of these issues come up repeatedly in patent infringement litigation, so the court's analysis of them under the facts of this case is particularly useful.
Location of Source Code
Plaintiff wanted production limited to Dallas or the Eastern District of Texas - defendants wanted the office of counsel for the producing party or as permitted under the Federal Rules of Civil Procedure. Judge Schneider sided with the defendants. "Given the circumstances of this case," he wrote, "the Court finds Plaintiff’s proposal overly restrictive. The Court believes it is reasonable for Defendants to provide source code at the office of the producing party or where it is kept in the ordinary course of business. See Fed. R. Civ. P. 34(b)(2)(E)(i). Shifting the travel burden from Plaintiff to Defendants is unwarranted in this action. Plaintiff voluntarily chose to pursue this litigation against a significant number of defendants. Because Plaintiff created this logistical burden, it must now bear the impact."
Plaintiff requested that the receiving party be allowed to bring into the secure room a cellular telephone and a note-taking computer disconnected from the internet. Judge Schneider disagreed, writing that "[t]he Court is unconvinced that sufficient review of Defendants’ source code requires a cellular telephone or note-taking computer. In light of the highly confidential nature of the source code, allowing these devices within the secure room would significantly increase the possibility of inadvertent disclosure. Plaintiff has not shown any necessity for these devices. In this instance, the interest of protecting the source code far outweighs the convenience of allowing a cellular telephone or note-taking computing within the secure source code room."
Format of Source Code
Defendants proposed production in native format, and plaintiff wanted it in compilable form. (You wonder what Blackstone would have made of this issue, don't you?) Judge Schneider found that electronic native format was sufficient, citing the applicable federal rule. "Generally, a party need not produce source code in any other format than electronic native form. See generally Fed. R. Civ. P. 34(b)(2)(E)(ii)–(iii) (“[A] party must produce [electronically stored information] in a form or forms in which it is ordinarily maintained or in a reasonably useable form or forms” and “[a] party need not produce the same electronically stored information in more than one form”). Here, the Court sees no compelling reason to deviate from this principle."
The Tools Available for Source Code Analysis
Plaintiff requested that the tools Visual Studio and Understand be available on the standalone computers containing the source code, asserting that without these tools, it could not sufficiently perform its infringement analysis. "Defendants broadly dismiss Plaintiff’s request as inappropriate without any detailed discussion," Judge Schneider wrote, and agreed with the plaintiff that analysis tools are necessary for Plaintiff to properly conduct its infringement analysis. "Although Defendants bear the burden to support their proposed limitation," he noted, "they provide no compelling rationale for denying Plaintiff’s request."
The parties agreed that the receiving party shall be permitted to print continuous blocks of source code not in excess of 35 pages or 500 pages in total, but disagreed on who should bear the burden when a parties request additional pages. "The Court finds that it should be the producing party that bears the burden of establishing why it should not comply with the request for additional pages," Judge Schneider decided. "It is well established that the party seeking to limit discovery carries the burden of showing good cause. . . Here, the Court is not persuaded to shift the burden to the receiving party to demonstrate good cause for the request. But the Court nevertheless expects that any additional pages requested by the receiving party be made in good faith." (Internal citations omitted).
Patent Prosecution Bar
The parties first dispute to whom the prosecution bar should be applied. Plaintiff contended that it should apply to all parties in this litigation who review highly sensitive information, while Defendants proposed that the bar apply only to Plaintiff’s counsel or any individual associated with Plaintiff who reviews Defendants’ highly sensitive information. Judge Schneider decided that the bar would apply only to plaintiff's counsel. "As justification for its proposition, Plaintiff argues that it currently has a product, ZLand.com which includes proprietary code relevant to the patent-in-suit. But Plaintiff provides no further explanation of the relevance of its product to the asserted patent or this case. Plaintiff’s statement that its product is merely relevant to this suit is an insufficient basis for implementing the prosecution bar to the several hundred attorneys representing Defendants. The Court is unwilling to place such an immense burden on Defendants’ counsel without a detailed explanation for its justification. Because Plaintiff has failed to show good cause to support its proposal, the Court finds that the prosecution bar should be limited to Plaintiff’s counsel who review Defendants’ highly sensitive information."
The parties also disagreed on whether the prosecution bar should apply to reexamination proceedings. Plaintiff believed that the bar should not apply to reexaminations, and defendants disagree. Judge Schneider found Mirror Worlds, LLC v. Apple, Inc., No. 6:08-CV-88, 2009 WL2461808, at *1–2 (E.D. Tex. Aug. 11, 2009) instructive in this case, and decided that the bar should not apply to reexaminations in this case. "Defendants’ concern about the use of its highly sensitive information in reexamination is undercut by the fact that claims can only be narrowed, not broadened, during reexamination. Given the large number of defendants in this case, it is highly unlikely that Plaintiff would seek to narrow its claims to cover any single defendant at the risk of excluding the remaining accused infringers. . . . The Court is unconvinced that the burden of requiring Plaintiff to obtain separate counsel for reexamination outweighs any risk of inadvertent use or disclosure of Defendants’ highly sensitive material. Defendants have failed to show good cause to justify the extension of the prosecution bar to reexamination proceedings."
Judge Schneider directed the parties to submit a revised proposed protective order reflecting his rulings within ten days of today.