Source code ch.14: Scheduling

Source Code & Software Patents: A Guide to Software & Internet Patent Litigation for Attorneys & Experts
by Andrew Schulman (
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)

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