The opinion of the court was delivered by: Hon. Nita L. Stormes U.S. Magistrate Judge United States District Court
ORDER DETERMINING JOINT MOTION FOR RESOLUTION OF DISCOVERY DISPUTE NO. 1 [Doc. No. 325]
In this consolidated case plaintiff Ameranth, Inc. alleges a patent infringement action against 30 remaining Defendants in the hospitality, entertainment, ticketing, travel, restaurant and food service industries. The technology at issue concerns an integrated system for coordinating orders, reservations, tickets and other services that is used across several industries.
The parties filed a joint motion to resolve a discovery dispute regarding the anticipated production of source code that will be required under Patent Local Rule (PLR) 3.4(a). In sum, Ameranth asks this court to order each Defendant to produce the entire source code tree for each accused product. Defendants argue that they need only produce the portions of source code that show the operation of the system aspects identified in Ameranth's PLR 3.1(c) charts. For the following reasons, the court DENIES Ameranth's request to compel production of the entire source code tree and GRANTS Defendants' request to produce select portions of the source codes.
On November 14, 2012, the court held an initial Case Management Conference (CMC). The court discussed with counsel, among other things, various issues regarding production of source code. The court requested "further briefing on the issue of whether the entire source code tree as it has been maintained under a revision control system needs to be produced." The court ordered Plaintiff to "address why it needs the complete source code tree from each defendant" and to support that argument with a declaration from its technical expert. The court also asked Defendants to "address how they propose to provide a complete production of source code as it is kept in the ordinary course of business without producing the entire source code tree for the alleged infringing programs." The court also asked for supporting declarations from in-house technical experts from a sampling of the Defendants. [Dkt. No. 306 ¶ 4.]
After meeting and conferring on the issue, the parties submitted this joint motion to determine their dispute. The parties argue over what, exactly, PLR 3.4(a) requires with regard to the scope of production of source code. Second, if PLR 3.4(a) requires production of the entire source code tree, Defendants argue that it would be an undue burden for them to comply with such a requirement.
The Federal Rules regarding discovery promote "the goal of informing parties in civil cases of all material facts prior to trial." In re Google Litigation,2011 WL 286173, *4; 2011 U.S. Dist. LEXIS 9924, *17 (N.D. Cal. Jan. 27, 2011) (citing Herbert v Lando, 441 U.S. 153, 177 (1979)). This broad approach is also reflected in patent cases, where under the patent local rules parties must make substantial disclosures regarding the Accused Instrumentalities. Id.,2011 WL at *4; 2011 U.S. Dist. LEXIS at *17. Under amended PLR 3.4,*fn1 a party opposing a claim of patent infringement must produce or make available these documents, to accompany its invalidity contentions:
a. Source code, specifications, schematics, flow charts, artwork, formulas, or other documentation sufficient to show the operation of any aspects or elements of any Accused Instrumentality identified by the patent claimant in its Patent L.R. 3.1.c chart[.]*fn2
Even where there are specific discovery rules regarding patent cases, the discovery in such "cases is always subject to 'ultimate and necessary boundaries' imposed by the trial court." In re Google Litigation,2011 WL at *4; 2011 U.S. Dist. LEXIS at *17 (citations omitted). Here, Ameranth and Defendants argue over the meaning of the PLR 3.4(a) language "sufficient to show the operation of any aspects or elements of any Accused Instrumentality."
In the federal discovery rules, all relevant information is discoverable if it "appears reasonably calculated to lead to the discovery of admissible evidence." Fed. R. Civ. Proc. 26(b)(1). But this liberal approach to discovery may be limited. Id. To help determine the scope of discovery required by PLR 3.4(a), this court will consider whether "the burden or expense of the proposed discovery outweighs its likely benefit, taking into account the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the litigation, and the importance of the proposed ...