Protective Orders Can Make or Break Your Software Patent Litigation
When any software litigation matter comes to fact discovery, particularly source code review, a protective order is set into motion. A protective order fulfills the function of protecting proprietary, technical documentation and other confidential information when they are asked to be presented in court.
Protective orders used in software patent litigation often exhibit features that highly restrict a source code reviewer or expert in conducting their analysis. Lawyers often use boilerplate language to draft protective orders across litigation cases. In some cases, the producing party’s law firm knowingly exercises certain restrictions, negatively affecting the source code examination. Therefore, before agreeing to the terms of a protective order, it is imperative to negotiate the terms considering the nature of the case and the complexity of code analysis.
Breakout Rooms and Hours
The location and hours for examination are preordained for expert witness reviews in software patent litigation. Typically, the expert is permitted regular business hours within a controlled room and a standalone computer without internet access for the source code analysis. However, in some instances, the protective order does not include components like a break-out room, or the hours allotted for inspection.
Negotiating for a designated break-out room, the review hours, and extensions, if necessary, becomes crucial to allow the expert a seamless source code examination. The following excerpt is from a revised protective order highlighting the importance of having all these components in place:
“The Producing Party shall provide a conference room for the Receiving Party’s source code reviewers in which to review the Source Code Material (the “Review Room”) from 9:00 a.m. through 5:00 p.m. CST (“Normal Business Hours”) as well as a breakout room (near the Review room) …However, upon reasonable notice from the Receiving Party, the Producing Party shall make reasonable efforts to accommodate the Receiving Party’s request for access to the Source Code Review Machine(s) outside of normal business hours.”
Print-out Limits and Continuous Block of Source Code
Protective order limitations can manifest in many ways, primarily targeting the expert’s liberty of source code analysis. Most protective orders prohibit copying code sets that circumvent a patent owner’s invention, bar photocopies beyond the minimum quantity, and restrict printouts of directory listings, script output, etc.
Depending on the complexity and criticality of the case, consultants also negotiate access to maximum confidentiality codes for inspection. Similarly, negotiating the number of printout pages and copy limit of confidential source code can allow the expert to conduct a thorough examination of the code, maximizing their time and dollar value. For instance,
“The Receiving Party may request printouts of limited portions of the Source Code. Any printed portion that consists of more than twenty-five (25) pages of a continuous block of Source Code shall be presumed to be excessive.”
Note-taking Protocol
Protective orders also constrain the expert’s ability to take notes from the source code analysis. Typically, the examiner is barred from bringing a laptop, mobile devices, and other instruments into the source code room. This means that the expert is allowed to take handwritten notes and carry them to the breakout room for further analysis. In some cases, these notes can also be requested to be reviewed by the producing party to safeguard any direct quotations from the source code.
However, in the case of a highly complex and lengthy code review, a note-taking computer can be negotiated while complying with the other terms of the protective order, for instance:
“The Producing Party shall allow a single note-taking computer, where said note-taking computer will not have an internet connection and will not be capable of audio, image or video recording, and provided further that such notes are securely stored on an encrypted, removable, storage drive provided by the Source Code Reviewer and taken by the Source Code Reviewer at the end of any review session.”
The consultants must also negotiate resources for review notes and align with the protocol prior to the technical examination.
Source Code File Architecture
Adding clauses to fetch intact source code file hierarchy can be instrumental in creating a strong software patent litigation case. Often, the review computer contains a flat file with fragmented excerpts from large bodies of code, making it ambiguous for examination.
Maintaining the source code in its original hierarchical structure, as defined for each module or package, aids in the clarity and understanding of the codebase for reviewers, as it aligns with the logical organization of the modules. The hierarchical arrangement enhances readability, promotes modularity, facilitates easy navigation, and is well-supported by code review/ development. An intact source code hierarchy can be specified in the protective order as:
“The source code shall be produced in the original hierarchical structure defined for the code module or package instead of a flat folder including all the files.”
Review Devices
The number and kind of electronic device allotted in the review room largely depends on the number of source code experts, the number of patents involved, and the length and complexity of the code. This example of a negotiated protective order clarifies any disputes regarding the need for three computers as per the demands of the code examination:
“The parties will confer In Good faith regarding the need for additional stand-alone computers, but in any event the producing Party shall not be required to provide the receiving Party with more than three (3) stand-alone computers.”
Forensic Tools
Attorneys often agree to the default set of tools before consulting with source code experts regarding their methodology and requirements, which can later hinder the expert’s analysis during the code examination. The review tools must be agreed upon beforehand for the Producing Party to install the listed applications in the review computer before the inspection begins:
“The Receiving Party shall supply the Producing Party with the install files of the required tools and any license keys during the notice period. The Producing Party and Receiving Party shall promptly meet and confer in good faith to resolve any disputes regarding the configuration and installation of the software tools on the Source Code Computer.”
Adding a detailed list of tools and their purposes in parsing the source code helps craft a coherent protective order.
Protective orders take center stage in intellectual property litigations. Careless drafting of a protective order can have long-term ramifications throughout the litigation, leading to wasted time and dollar value or, worse, public disclosure of sensitive information that the client seeks to protect. The above-mentioned are some of the exemplary factors to keep in mind while negotiating a protective order. Considerations like tiered designations, litigation escrow agents, and drafting clawback provisions are crucial in a productive source code examination. Attorneys in the Receiving Party are advised to carefully assess the scope of the protective order and its impact on the code review.
Rather than accepting the proposed protective order as a process document prior to a source code examination, consulting with a source code review expert can help draft the clauses in your client’s favor. Experts at Lumenci have hands-on experience in source code examinations of varying difficulty across software litigation cases. Our team has scanned through millions of lines of code to excavate the evidence required to turn infringement cases into successes.
Ayantika Dhar
Marketing Executive at Lumenci