Computer Software-Related Litigation: Discovery and the Overly-Protective Order
Federal Courts Law Review, Forthcoming
50 Pages Posted: 24 Dec 2011 Last revised: 14 May 2014
Date Written: December 7, 2011
Litigation involving allegations of intellectual property infringement concerning computer software is some of the most complex, time consuming, and expensive litigation in which private parties engage. Certain practices in discovery, including, most significantly, the use of poorly drafted discovery agreements that also include “overly protective” orders, increase that expense dramatically. Regardless of whether the allegation is patent infringement, copyright infringement, or trade secret misappropriation, prosecuting and defending the assertions in the case requires a probing analysis of the computer source code. In these types of cases, both parties will engage forensic software analysts to assist the lawyers in preparation for trial and to provide expert witness testimony for the court. The forensic software analysts will dissect the computer source code, often examining the source code of both parties, looking for signs of infringement or misappropriation as well as for technical explanations for similarities in the way the code is written or structured. But first, the computer source code must be disclosed to the opposing party. Such disclosure is almost always done pursuant to a protective order, typically stipulated to by the attorneys. Lawyers often agree to protective orders that significantly and unnecessarily increase the costs of discovery.
Attorneys should pay careful attention to the provisions addressing the requirements of production and analysis. Additionally, attorneys must understand the consequences of the clauses contained in protective orders in these types of litigation. As described in this article, it is possible to provide robust protection for disclosed source code while at the same time not unnecessarily and dramatically increasing the cost of discovery by weaponizing the protective order.
The goals of this article are three-fold. First, we seek to help lawyers understand the process of forensic software analysis. Second, we provide a set of model clauses aimed at avoiding pitfalls in the design of the discovery process, including model clauses for a protective order of appropriate scope and with appropriate protections from further disclosure of the source code that is produced. Third, for judges who are asked to intervene in discovery battles, including fights over the proper scope of a protective order, this article is meant to assist in evaluating the parties’ arguments.
Keywords: discovery, protective orders, patent infringement, copyright infringement, trade secret misappropriation, computer software, litigation
JEL Classification: K41, O34
Suggested Citation: Suggested Citation