Source Code & Software Patents: A Guide to Software & Internet Patent Litigation for Attorneys & Experts
by Andrew Schulman (http://www.SoftwareLitigationConsulting.com)
Detailed outline for forthcoming book
Chapter 14: Scheduling: “diligence,” timing of source-code exam, and supplementation
14.1 “Diligence”
- Courts have sanctioned parties for lack of “diligence” in examining produced source code
- “Diligence” especially required of non-practicing entities (Diagnostic Sys. v. Symantec)
- After you fought so hard to get it, remember to use it
- Don’t ask for more, when experts haven’t yet examined what has already been produced
- “Reasonable opportunity to review” code is the flipside to “diligence”
- Finalizing and/or supplementing infringement contentions, soon after source-code produced
14.2 Coordination of source-code exam with other litigation events
- Logically, source-code exam should chronologically follow Markman (construe claims first, then read construed claims onto product), but it seldom works that way [slightly analogous to how copyright supposed “abstraction/filtration/comparison” test is really a “comparison/abstraction/filtration” test: litigants first look at the products]
- When the source-code exam occurs before Markman claim construction, the examiner may need to take a flexible (both broad & narrow) approach to code/claim matching
- 30 day response deadlines
- Compressed timeframe, aggressive schedule, especially in ITC practice, “rocket docket”
- Impact of source-code production delays on scheduling
14.3 Source-code examination timing
- Go as soon as possible (see “diligence” above)
- Often return source-code visits will be required, even when production has not changed
- Logistical difficulties of return trips to source code, under PO (“get it right the first time”; see chapter 24 on printing)
- Repeat visits to source code following additions to (and sometimes deletions from) the source-code production
- “Rolling” discovery (e.g. weekly or daily code updates, based on continuing source-code changes)
14.4 Supplementing filings, based on source-code examination results
- Finalizing: turning preliminary/initial infringement contentions (PICs) based on pre-filing investigation, into final infringement contentions, with “pinpoint” references to source code, soon after source code produced (see chapters 7 and 26)
- Supplementing discovery requests & responses
- Supplementing expert reports, responses & rebuttal reports
- Supplementing infringement contentions & responses, claims tables (e.g., adding additional products to complaint)
- Supplementing filings after Markman hearing?
- Impact of source-code production delays on ability to supplement (e.g. add new products to complaint, when source-code production for new products delayed?)
- 11th hour work on filings, without source code access [courts have not accepted the need for 24/7 access to the source code]
Source-code exam scheduling cases
- Diagnostic Sys. v. Symantec (no excuse for lack of diligence, when non-practicing entity: litigation is all they do; after reasonable opportunity to review, must identify pertinent source code; “trolling”; “fish or cut bait”; have had 11 months; now have only 15 days to finish exam)
- Advanced Software v. Fiserv (4 month src code access ample time to find (or not find) use public key)
- Big Baboon v. Dell (didn’t examine for 2 months after had access)
- Whitserv v. Computer Packages (“hundreds of hours”)
- Symantec v. McAfee (copyright case; deny discovery for “all” source code because had disputed disk for 9 months, and appreciated its significance, but waited to ask)
- Apple, AT&T antitrust litigation (need for source code speculative, where P experts made no effort to review source already in possession)
- Digital Reg TX v. Adobe (time needed to review source code: extend discovery cut-off?; adding new apps to complaint without leave of court?)
- Symantec v. Veeam (good cause to supplement invalidity contentions, following diligence e.g. request more info re: source code)
- MetLife v. Bancorp (even though delay in producing all source code versions, no SJ)
- Apple v. Samsung (constant changes to open source, question whether to produce changes; producing party states non-produced not materially different; supplementing source-code citations “now a regular part of the patent litigation landscape”)
- MIT v. Abacus (“no excuses” clause re: supplementing)
- Garmin v. TomTom (grant motion to add an accused product)
- REC v. Bamboo (pinpoint citations in claims tables, after source code produced)
- AVG v. Electronic Arts (once get source code, supplement infringement contentions)
