Source Code Review -- What Must a Defendant Provide During the Review?

June 17, 2011

In a case from the Eastern District of Texas, the district court granted an emergency motion to compel pertaining to source code contained on a stand-alone computer. In the case, Hyundai had loaded its source code on a stand-alone computer and provided a standard text-editor (Notepad), a source code editor (Notepad ++) and a comparison tool (Beyond Compare) to facilitate plaintiff's review of the source code. The plaintiff found that this was insufficient and requested that Hyundai provide integrated development environments to facilitate the review, arguing that the integrated development environment was required to mimic the operation of the source code. Hyundai refused and the emergency motion was filed.

In filing its emergency motion to compel, the plaintiff argued that because of the modular nature of the source code, the integrated development environments would allow its experts to follow various jumps between modules contained in separate files, which would replicate the behavior of the source code during execution. The plaintiff noted that the tools it wanted installed are free and the installation is "virtually effortless."

Hyundai contended that the tools it provided were sufficient and that loading the tools requested by plaintiff would require installation of additional hardware, third-party software libraries, configuration files and running servers, all of which would cost Hyundai additional expense.

The district court disagreed with Hyundai. "The Court finds that installation of the two [integrated development environments) IDEs is not prejudicial or overly burdensome to Hyundai" because the plaintiff represented that it "merely requests installation of the two IDEs with no additional compiled code, libraries, running servers, operational databases servers or any other equipment that ... might result in additional costs to Hyundai." Therefore, the district court sided with the plaintiff and ordered Hyundai to supply the IDEs.
"Accordingly, the Court hereby grants [plaintiff's] motion without prejudice as to Hyundai requesting a meet and confer and ultimately the Court's intervention should the installation and operation of these tools require additional costs as enumerated above."

Thus, the district court left open the possibility that Hyundai could come back to the district court if the source code review would cause Hyundai additional cost.

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The ongoing debate over source code review is likely to continue as parties struggle to review source code to determine how it functions in its native environment. It is frequent that these reviews are conducted on stand-alone computers and that is likely to continue for confidentiality and security reasons. Accordingly, we can expect more case development in this area as the district court's balance the need for information against the cost of disclosing and reviewing the information.

We can also expect that additional tools will be requested by the parties for review of source code and that both sides with make arguments about why they are or are not necessary and why they do or do not increase the costs of discovery and/or impact confidentiality and secrecy.

SFA Systems, LLC v. BigMachines, Inc., et. al., Case No. 6-10-cv-00300 (E.D. Tex. May 31, 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.