A Spotlight on Two Instructive Discovery Disputes

This post below is courtesy of guest contributor Chris Hardee, AVP of Technology for Lumenci Inc., a technology consulting firm that provides services in the field of patent litigation. Neither WDTX Patent Blog nor any person or entity affiliated with it has received compensation from Lumenci in exchange for running this post.

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On April 20, Judge Albright issued rulings resolving two discovery disputes in Vervain, LLC v. Micron Technology, Inc., No. 6:21-cv-487. The issues raised in both disputes frequently occur in patent cases, and practitioners would do well to consider their future implications.

Source Code Printout Dispute:

In the first dispute, Vervain petitioned that its requests for “1,533 pages across ten products” of source code printouts be satisfied; Micron argued that Vervain’s requests for code were excessive.

The source code printout argument is too common in software patent cases. Many Protective Orders specify a page limit for source code printouts but allow the reviewing party to request additional pages by agreement with the producing party or by approval of the Court. (Judge Albright’s Default Protective Order [note this hyperlink launches an MS Word download] allows a reviewing party “to make a reasonable number of printouts and photocopies” of source code and is silent as to the total number of pages allowed.)

In this case, Micron denied the additional printouts that Vervain requested. Micron argued that over 1500 pages of code were excessive for a code review base involving 10 products and around 160,000 files. Micron specifically faulted Vervain for requesting 345 pages of printouts from one product on the ground that the amount was significantly more than Vervain would use in citations or witness questions. Vervain responded that some of the printout requests were to compensate for deficiencies in Micron’s document production, which necessitated requests for “printing of non-source-code Microsoft Office documents on the review computer that were not produced as part of Micron’s regular production.”

Based on our experience at Lumenci, the code volume at issue in this fact pattern is quite typical since the source code productions often consist of millions of lines of code and, in today’s world of software, this can often contain many layers of abstraction. Dozens of files can be needed to understand even short passages of code.

Micron also argued that the code was at risk of being exposed to the outside world, a serious concern that parties on both sides of patent disputes generally take very seriously. Again, Lumenci is without exception directed by counsel to take great care with the code produced. (Lumenci is not unique in this.)

Hence, in this dispute, Judge Albright ordered that Micron produce the code promptly and that Vervain store it securely:

Defendants shall produce all requested source code printouts promptly but not later than April 21, 2022, to Plaintiff, and Plaintiff shall store all produced source code printouts in an appropriate gun safe that is not easily movable.

Why This Matters:

The key takeaway is that, while the number of print requests for each case will differ, reviewing parties have significant leeway when making source code print requests when they are needed to support expert reports, depositions, or other valid work. Recognizing this can reduce the time spent arguing over what will be deemed “reasonable.”

Uncharted Product Coverage in Infringement Contentions:

The second issue concerned whether Vervain’s Infringement Contentions appropriately covered the products for which Vervain requested discovery. The issue was whether contentions that charted one type of product—in this case, a Solid-State Drive (SSD)—could be leveraged to pursue discovery for other types of Micron’s products. Micron took the position that the infringement chart entitled Vervain to discovery only on SSD products and that many of the products in Vervain’s follow-up discovery requests did not even contain the elements required by the patent.

Typically, the memory used in SSDs uses some form of static or dynamic wear-leveling to prevent portions of the drive from dying prematurely. Vervain argued that the data movement mechanism used to extend the lifespan of flash-memory products covered in the patent did not distinguish based on the specific type of flash memory that sat under it. Vervain also stated that its observations from source code review gave it a good-faith basis to believe the other Micron products for which they requested discovery would operate similarly.

Here, Judge Albright referenced guidance he provided in March in the IGT v Zynga case. That decision (1) allowed IGT to pursue discovery for previously uncharted products based on those products being “reasonably similar” to the charted products in IGT’s Preliminary Infringement Contentions, and (2) rejected Zynga’s request that each of roughly 100 gaming systems needed to be charted by IGT before obtaining discovery.

In this dispute, Judge Albright decided that Vervain had not shown that the uncharted products were “reasonably similar.” The Court ordered Vervain to amend its infringement contentions using the previous guidance in less than a week:

Plaintiff shall follow the Court’s guidance regarding infringement contentions in IGT v. Zynga Inc., No. W-21-CV-00331-ADA, 2022 U.S. Dist. LEXIS 35393 (W.D. Tex. Mar. 1, 2022), and Plaintiff will supplement its final infringement contentions by April 25, 2022. If needed after this supplementation, the parties will return to the Court.

Why This Matters:

The second part of this order provides some insight into the bar for products not expressly charted. Considering this when drafting initial Infringement Contentions is essential because an advance plan to connect uncharted products to the exemplary products that were charted in a party’s PICs could avoid the significant burden of amending the Contentions in a tight timeframe. Doing this analysis also provides an excellent time to check whether the same theory will hold true across the accused products.

And in collecting and producing responsive documents, an accused infringer should evaluate the patentee’s PICs for the completeness of the disclosure prior to supplying source code and technical documents. Ensuring the patentee has met its bar can reduce the accused product list or at least force the requesting party to substantiate that all accused products are “reasonably similar.”

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