Want Source Code? Talk To The Engineer

When your website or other software gets accused of patent infringement, the patent–owner is generally going to want to see “your” source code. Giving up your source code, an Internet company’s life’s blood, can be difficult enough even under the strictest protective order, but that is not the only issue to worry about. It can be a tricky proposition in e–commerce and other network–based businesses to figure out exactly where your source code ends and your vendor’s begins. Do you have to produce a vendor’s source code when the plaintiff asks? If you produce it and don’t get permission from the vendor, are you violating your service agreement with that provider? These questions don’t always have easy answers. And the wrong answer can land you in a heap of trouble.

While it has become de rigueur in patent cases in some jurisdictions for defendants to produce home–grown code, third party code can receive somewhat greater protection, a conclusion further supported by a recent order from the Southern District of California (HT: Software Intellectual Property Report). In that case, the district court ruled that a third party could withhold its source code from production because the third party code was not accused of infringement and a deposition of a knowledgeable engineer would almost certainly yield the plaintiff sufficient information about how the third party code operated within the defendant’s accused instrumentality.

If third party code receives greater protection from discovery, then that means defendants may want to consider if it is possible to clarify which code belongs to their vendors and to give those vendors a fair chance to decide if, when, and how to produce that code.

Realtime Data (SD Cal May 25, 2012)

View this document on Scribd

Posted by David Swetnam-Burland