Friday, September 2, 2011

Can I object to the production of my client’s source code on the basis of relevance or confidentiality?

The short answer is probably not. We conducted a search of all court orders involving discovery disputes where a party objected to the production of source code on the basis of relevance or confidentiality. We identified 19 such orders. As you might imagine, the specifics of each order depend heavily on the facts and circumstances of each case. However, a review of all 19 orders revealed the following:

Where the source code is relevant to the patent issues, and a timely and proper request has been made, defendants are uniformly ordered to produce source code.
In fact, we discovered only one instance where the court denied a motion to compel defendant’s source code. But that case also involved a number of procedural missteps and even there the court allowed a renewed motion if plaintiff’s review of other discovery responses proved inadequate.

Courts typically address confidentiality concerns by entering a protective order limiting the people who have access to the source code. Other protections include: requiring production to a third party or requiring production at defendants’ headquarters.
In some cases courts have been open to production of a portion of the source code, subject to expansion upon a showing of need by plaintiff.

Where source code production involves additional costs, there is no discernible trend as to which party bears the additional cost. In some cases the cost was allocated to defendant, in others to plaintiff, and others it was shared.

In one instance, a creative defendant sought production of plaintiff’s source code on the basis that it was relevant to enablement, inventorship, and obviousness issues. The court disagreed and denied the motion.

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