B2 Intellectual Property Report

Third Party Protected From Producing Source Code in Patent Case

Can a third party be compelled to produce source code in a patent infringement lawsuit?  Not when its concerns about the security of its source code are well-founded, and when the deposition of a knowledgeable engineer will suffice to answer questions about how the software works, according to a magistrate judge in California.  Realtime Data, LLC v. MetroPCS Texas, LLC, No. 12cv1048-BTM (MDD) (S.D. Cal. May 25, 2012).

The plaintiff had sued Sprint Nextel Corporation and other defendants in the Eastern District of Texas, and then served a subpoena on Ortiva Wireless in the Southern District of California under Federal Rule of Civil Procedure 45.  In the underlying lawsuit, the plaintiff alleged that Sprint infringed its “patents by using certain data compression and data acceleration technology in their communication networks,” and that Sprint obtained certain technologies from Ortiva.  Therefore, the plaintiff contended that Ortiva possessed documents, including source code, relevant to the issue of infringement.

Ortiva objected to the production of its source code on the grounds that it was a “highly confidential trade secret and one of the most valuable assets of Ortiva.”  Ortiva further argued that, to the extent the plaintiff required an explanation of its source code, the plaintiff could depose a knowledgeable engineer.  The plaintiff responded that the source code was “the best way to determine how a program operates and that Ortiva's concerns are mitigated by a protective order governing the underlying case.”

The court found that ordering Ortiva to produce its source code would constitute “an undue burden.”  Ortiva was not a party to the underlying lawsuit, and was not alleged to infringe the plaintiff's patents.  Its concerns about the security of the source code, the protective order notwithstanding, could not be ignored.  The court further agreed that “that a deposition of a knowledgeable Ortiva engineer should be sufficient to inform Plaintiff regarding how Ortiva's products work in the Sprint network.”  Accordingly, the plaintiff's motion to compel production of Ortiva's source code was denied.  (In general, the plaintiff's motion to compel Ortiva to produce documents in response to the subpoena was denied in part, and granted in part.)

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