Complete Source Code Production Ordered for Deposition

June 29, 2011

In a recent case from the Central District of California, the court ordered the defendant to produce the complete source code for an allegedly infringing product during a deposition. The plaintiff noticed the depositions of certain engineers from the defendant and requested that the defendant provide a complete copy of the source code on a computer during the deposition. The defendant objected on two grounds.

The defendant first argued that such a request and corresponding procedure would violate the protective order entered by the court. The defendant also argued that the proposals offered by the plaintiff were insufficient to maintain the security and integrity of the source code for the allegedly infringing product. The court disagreed with both of defendant's objections and ordered the production of the source code.

With respect to the first objection regarding the protective order, the court found that the protective order did not prohibit the utilization of the complete source code at a deposition. The protective order stated that the plaintiff was only to use so much of the source code as reasonably necessary. The court found that this language "cannot be reasonably interpreted as prohibiting access to the complete source during the depositions, rather it limits the extent of source code if marked as deposition exhibit." The court also found persuasive the plaintiff's point that copying the "entire source code would involve about 57,000 pages, and that a deposition of an engineer employed by [defendant] who is familiar with this source code could not reasonably be accomplished by poking through reams of paper." The court also found persuasive that the plaintiff could not reasonably anticipate in advance exactly what potions of the defendant's source code might be relevant at a particular engineer's deposition.

Turning to the defendant's second objection, the court agreed that the plaintiff had proposed adequate alternatives to protect the security and integrity of the source code. "Some of those alternatives include taking the deposition at the offices of the law firm where [defendant] has made the source code available for inspection ..." The court also noted that plaintiff had also been willing to take the depositions where the source code was maintained, presumably at the locations were the engineers worked.

Accordingly, the court found that the parties could reach an appropriate comprise to address the defendant's security concerns. The court did order that if the defendant believed that the employees had to travel to the source code (either at counsel's office where it was produced or at the defendant's office were it was maintained) then it would be appropriate to require the plaintiff to pay for that travel expense and an appropriate per diem as well.

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The main argument that appeared to convince the court to order the production of the complete source code was the point that having the complete source code available would be appropriate for the depositions so that the plaintiff's did not have to guess or speculate what to provide at the deposition. This is yet another decision in the ongoing debate about over how much and how to provide source code during the discovery process. The production of the complete source code was ordered here but only for purpose of use during the deposition and only with appropriate security.

Nomadix, Inc. v. Hewlett-Packard Company, et al., Case No. 09-08441-DDP (C.D. Cal. June 21, 2011)

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The authors of www.PatentLawyerBlog.com are patent litigation lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.