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Patent infringement cases involving electrical or computer technology often require companies to divulge one of their most closely guarded valuables: the computer source code that makes their products tick. Reluctantly, in-house counsel responsible for defending these cases may be required to produce that code to plaintiffs’ counsel. On the flip side, patent infringement plaintiffs may need to obtain and analyze defendants’ source code to prove aspects of their cases and may find themselves ordered by a court to produce their own source code to defendants’ outside counsel. In-house counsel may feel some serious heat from senior members of the company’s technical staff when the technical team hears about the legal team’s plan to provide a copy of the company’s highly valued and guarded code to the lawyers representing the company’s archrival. But there are ways to protect the company, comply with the court’s discovery orders and even diffuse some of the ire from the company’s technical staff. First, what is source code? Today, many electronic devices, such as computers, TVs and CD players — and probably even some toasters — utilize integrated circuits, such as microprocessors, as their electronic brains. These circuits actually run computer programs that enable these devices to perform their functions. Without the programs, the devices would not work. Computer programmers create these programs, first by writing what is known as source code in a human-readable language and then compiling (processing) the source code into machine-readable executable code, which runs in the devices. Source code can be tremendously important in patent litigation. Imagine this scenario: Company A holds a patent and believes that Company B’s device or product has infringed its patent by the way the device or product performs certain functions. For example, Company A owns a patent on a CD player that figures out which song track on a CD is the longest and plays that one first. Let’s also say that the literature of Company B (another CD player manufacturer) boasts that its CD players also have that feature. That might be enough to provide a basis for Company A filing a suit, but how will Company A’s trial lawyers prove that Company B’s CD player actually has the feature and exactly how the feature is implemented? Typically, companies’ technical documentation describes — sometimes in an oversimplified or even inaccurate manner — their products’ designs and operations. Documentation writers often provide these descriptions on a general level, devoid of details. Armed with this description, a lawyer for plaintiff Company A might attempt to take a general deposition about Company B’s product’s design and operation from Company’s B’s well-prepared witness. This witness may not be too helpful in a general deposition yet later may be able to explain at trial why plaintiff’s counsel doesn’t understand the product’s design and operation. Thus, a savvy plaintiffs lawyer may want to obtain and analyze the source code used to create the executable code that runs in the defendant’s product. This code contains the basic building blocks of the accused product’s functionality. Usually, courts allow plaintiffs to obtain defendants’ source code, based upon arguments along these lines, so plaintiffs should be prepared to make them, and defendants should be prepared to respond to them. However, plaintiffs seeking source code must beware. They may have to produce their own company’s source code as well, if the defendant successfully argues that the plaintiffs’ code is relevant to issues in the case, such as determining when the company first used the invention. That could be relevant in determining the patent’s validity, for example. DON’T PANIC Here’s how courts typically handle source code: Judges enter protective orders setting the rules for how a party must handle an opposing party’s confidential information, such as source code. These are court orders, so patent litigators take them seriously. Under such protective orders, courts generally restrict receipt of source code to outside counsel and noncompany employee experts. Sometimes, courts add further restrictions by allowing code access only at the producing party’s location or opposing counsel’s office. Because of fears of easy (and even accidental) dissemination of electronic copies of the code on disk — or worse, through the Internet — courts routinely do not allow a party to make or remove any electronic copies of the opposing party’s code. Given this framework, in-house counsel on both sides of the docket can handle source code issues successfully. In-house counsel for the defendant should prepare senior company personnel for the possibility that the company might have to produce its code, and explain to them how confidential-information protective orders work. It’s wise to find a knowledgeable company employee to help outside technical experts assisting the legal team understand how the company’s code works. Because it may be important to obtain and analyze the plaintiff’s code, prepare executives responsible for paying the bills for the added cost of having a noncompany expert analyze the plaintiff’s code. In-house counsel on the plaintiff’s side also should be prepared. First, be sure that the outside counsel hires a source code expert who really knows code — not one who merely deals with code sometimes — and who can work well with the legal team’s primary technical expert. The primary technical expert will identify the functionality of interest, and the source code expert will have to find where it is (or is not) implemented in the code. Second, general counsel for a plaintiff must prepare the company’s executives for the expense of source code analysis and depositions. Source code can be voluminous, and, often, experts must dig through mountains of code to find the portions that implement the functionality at issue in the litigation. Usually, computer code contains comments, which explain what portions of code actually do, but if a foreign company wrote the code, then the comments may be written in a foreign language and helpful only once they’re translated into English. If the code is voluminous, it usually is impractical to translate all of the comments, so the source code expert may have to crack the code without the benefit of the comments in the first instance. Either comment translation or analysis without the comments can add further expense. Moreover, English may not be the primary language of the witnesses knowledgeable about the code — requiring the use of interpreters during any depositions taken concerning the code. Finally in-house counsel for a plaintiff should prepare the company for the possibility that it might have to produce its own valued code in the case. Pete Chassman is a partner in the Houston office of Howrey Simon Arnold & White, practicing in all aspects of intellectual property law, with a particular emphasis in litigating patent disputes and counseling clients in electrical, electronic, computer and semiconductor processing technologies. His e-mail address is [email protected]. If you are interested in submitting an article to Law.com, please click here for our submission guidelines.

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